Filewrapper-oldFilewrapper-oldhttp://www.ipmvs.com/Fri, 22 Feb 2019 12:08:29 GMThttp://backend.userland.com/rssRSS.NET: http://www.rssdotnet.com/Athena Diagnostics v. Mayo Collaborative Services Part 2, or: For the Benefit of Us All<h3 class="hidden">Post By Oliver Couture</h3>
<p>Part 1 of the review of <em>Athena Diagnostics v. Mayo Collaborative </em>reviewed how the Majority Opinion is at odds with precedent and the most recent
United States Patent &amp; Trademark Office (USPTO) Subject Matter Guidelines published last month. Part II below examines the dissent from Judge Newman
and how it aligns with both precedent and the Guidelines.</p>
<p>As stated in Part 1, at issue in <em>Athena</em> was an admitted novel and non-obvious diagnostic test that worked for the 20% of the population suffering
from myasthenia gravis (MG) to be diagnosed.</p>
<p>Judge Newman’s dissent, in her first paragraph, correctly identified the novel and non-obvious diagnostic test as a, “'new and improved technique, for
producing a tangible and useful result'”, citing to <em>CellzDirect</em>. She further explained that the claims are not directed to the actual discovery
of the antibody in question, but to a new diagnostic for a previously undiagnosable neurological condition, with the claims describing the test.</p>
<p>She further pointed to both the precedence and the statutes to show how the analysis of the Majority Opinion is wrong. She emphasized that the Supreme
Court cautioned to not let <em>Alice </em>eviscerate patent law and that the analysis of the claims as a whole was not changed in <em>Mayo</em>/<em>Alice</em>.
She also reiterated that 35 U.S.C. 101 was intended to cover a broad range of inventions and there is nothing in the statutes to say that diagnostic
methods should be an exception. In her analysis under <em>Mayo</em>/<em>Alice</em>, which is in line with both precedence and the USPTO Guidelines,
she found that the claims were not directed to, “a law of nature, but a man-made chemical-biomedical procedure”.</p>
<p>Her dissent, which is in line with both over 150 years of precedence and the Guidelines, should be the analysis under <em>Mayo</em>/<em>Alice</em>. Her
analysis still allows for novel and non-obvious diagnostic tests to be patentable, which will benefit everyone, for, as she puts it, “The loser is
the afflicted public, for diagnostic methods that are not developed benefit no one”. Anything more, and diagnostic methods will be <em>per se</em> unpatentable.</p>
<p>
<p><strong><em><a href="https://www.ipmvs.com/attorneys/oliver-p-couture-ph-d">Oliver P. Couture</a></em></strong><em> is an Intellectual Property Attorney in the </em><strong><em><a href="https://www.ipmvs.com/services/biotechnology-patents">Biotechnology &amp; Chemical Patent Practice Group</a></em></strong><em> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit<a href="https://www.ipmvs.com/"> <strong><span>the MVS website</span></strong></a> or contact Oliver directly via email at<a href="mailto:oliver.couture@ipmvs.com"> <strong>oliver.couture@ipmvs.com</strong></a>.</em>
</p>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17203059&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fathena-diagnostics-v-mayo-collaborative-services-part-2-or-for-the-benefit-of-us-allhttp://www.ipmvs.com/filewrapper/athena-diagnostics-v-mayo-collaborative-services-part-2-or-for-the-benefit-of-us-allFri, 15 Feb 2019 06:00:00 GMTBig Mac Blunder: McDonald’s Loses European Trademark Rights for Famous Burger<h3 class="hidden">Post By Nicholas Krob</h3>
<p>Last month, the European Union Intellectual Property Office (EUIPO) issued a surprise decision revoking fast food giant, McDonald’s, “BIG MAC” EU trademark
registration in its entirety. The decision was the latest development in an ongoing battle between McDonald’s and Irish fast food restaurant Supermac’s.
<br />
<br />McDonald’s trouble started in 2014 after they opposed Supermac’s trademark application for “SUPERMAC’S”. McDonald’s alleged that registration of this
mark would cause a likelihood of confusion among consumers, constitute unfair advantage, and detriment the distinctiveness or repute of numerous McDonald’s
marks, including “BIG MAC”, which had been registered with the EUIPO since 1998. Ultimately, in 2016, the Opposition Division of the EUIPO ruled that
the SUPERMAC’S mark must be rejected for all goods and services that were identical or similar to those offered by the various McDonald’s marks.
<br />
<br />Supermac’s hit back at McDonald’s by filing a request for revocation of McDonald’s BIG MAC mark in 2017 (Cancellation No 14 788 C). Supermac’s alleged
that McDonald’s had not put the BIG MAC mark to genuine use in the EU during a continuous period of five years following the date of registration in
relation to any of the registered goods and services, as is required under EU trademark law.
<br />
<br />To prove such use, McDonald’s submitted affidavits from McDonald’s representatives, brochures and printouts of advertising posters, printouts from
McDonald’s websites, and a printout from Wikipedia. However, the Cancellation Division of the EUIPO determined this evidence was insufficient. The
Cancellation Division concluded that, while the evidence exhibited the BIG MAC mark used in relation to some relevant goods, it did not give any data
for the real commercial presence of the mark or otherwise prove the extent of its use, failing to establish things such as the place, time, or extent
of any use. For instance, the Cancellation Division noted that the website materials showed use of the BIG MAC mark, but failed to show how often the
websites were visited, the locations from which they were visited, or whether any orders were placed through the websites (or whether it was even possible
to do so). Because of this, the Cancellation Division determined McDonald’s “has not proven genuine use of the [BIG MAC mark] for any of the goods
and services for which it is registered” and canceled the mark in its entirety.
<br />
<br />While this is a surprising result given the widespread popularity and commercial success of McDonald’s and its Big Mac burger, it serves as an important
reminder for all trademark owners, whether big or small, to be diligent in the maintenance of their marks. For even something as big as the Big Mac
is not immune from a loss of trademark rights.</p>
<p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/nicholas-j-krob" target="_blank" title="Nicholas J. Krob">Nicholas Krob</a></strong> is an Intellectual Property Attorney at McKee, Voorhees &amp; Sease, PLC specializing in Trademarks, Litigation, and Licensing. For additional information please visit <strong><a href="https://www.ipmvs.com/" target="_blank" title="MVS Website">www.ipmvs.co</a></strong><strong><a href="https://www.ipmvs.com/">m</a></strong> or contact Nick directly via email at </em><strong><em><a href="mailto:nicholas.krob@ipmvs.com" target="_blank" title="email Nick"><em>nicholas.krob@ipmvs.com</em></a></em></strong><em>.</em> </p>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17219343&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fbig-mac-blunder-mcdonald-s-loses-european-trademark-rights-for-famous-burgerhttp://www.ipmvs.com/filewrapper/big-mac-blunder-mcdonald-s-loses-european-trademark-rights-for-famous-burgerThu, 14 Feb 2019 06:00:00 GMTAthena Diagnostics v. Mayo Collaborative Services Part 1, or: How I Learned to Stop Worrying and Love the Inconsistencies<h3 class="hidden">Post By Oliver Couture</h3>
<p>Part 1 of the review of <em>Athena Diagnostics v. Mayo Collaborative </em>will look at how the Majority Opinion is at odds with precedent and the most
recent United States Patent &amp; Trademark Office (USPTO) Subject Matter Guidelines published last month. Part 2 will look at the dissent from Judge
Newman and how it fits better with both precedent and the Guidelines.</p>
<p>At issue in <em>Athena</em>, were methods for detecting an admitted novel and non-obvious autoantibody in a sample to diagnostic myasthenia gravis (MG).
The method could diagnose MG in the 20% of individuals that every current diagnostic for which there was no current diagnostic. This is because the
inventors identified a novel MG disease-related protein that could be detected in a patient’s sample using a variety of known in the art protein capture
and detection methods.</p>
<p>The District Court dismissed the infringement case due to patent 7,267,820 being directed to ineligible subject matter, and the Federal Circuit upheld
the decision. The Federal Circuit Majority Opinion’s analysis, for both Step 1A and 1B of the <i>Mayo/Alice</i> framework, included taking each limitation
separately and assessing if it was non-routine step or not novel, and if so, finding them “irrelevant to whether a claim is directed to a natural law”.
Under this standard, it is unsurprising that the Federal Circuit ultimately found that the claims are directed to a natural law, as all other limitations
were found to be irrelevant as the techniques were known in the art.
<br />
</p>
<p>The Majority Opinion shows just how inconsistent the precedence has become. This test, which was used to find the claims in <em>Cleveland Clinic</em> and
<em>Ariosa</em> invalid, but not <em>CellzDirect</em>, does not consider a claim as a whole. In other words, the Federal Circuit has stopped considering
a claim as a whole for diagnostic methods, but not for lab techniques.</p>
<p>Further, the Majority Opinion is inconsistent with the new USPTO Subject Matter Guidelines. Under the new Guidelines, even if an Examiner finds that the
claim is directed toward a judicial exception under Step 2A, prong 1, they are then required, under prong 2, to determine if the judicial exception
is being used as part of a practical application, without assessing the novelty of the rest of the claim. It is hard to see how a medical diagnostic
test is not a practical application. So, even if you can get your claims through the USPTO for a diagnostic under the guidelines, under <em>Athena</em>,
citing to <em>Mayo</em>, the claims are likely to be found invalid because, in the words of majority in this case, “Claiming a natural cause of an
ailment and well-known means of observing it is not eligible for patent because such a claim in effect only encompasses the natural law itself”.</p>
<p>Under this standard, it is hard to see how <em>Mayo</em>/<em>Alice,</em> as it is being applied by the Federal Circuit,&nbsp;is “promot[ing] the progress
of science and the useful arts,” or if the courts could more disincentivize development in this area.</p>
<p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/oliver-p-couture-ph-d" target="_blank" title="Oliver P. Couture, Ph.D.">Oliver P. Couture</a></strong> is an Intellectual Property Attorney in the <strong><a href="https://www.ipmvs.com/services/biotechnology-patents" target="_blank" title="Biotechnology Patents page">Biotechnology &amp; Chemical Patent Practice Group</a></strong> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit<a href="https://www.ipmvs.com/" target="_blank" title="MVS Website"> <strong>the MVS website</strong></a> or contact Oliver directly via email at<a href="mailto:oliver.couture@ipmvs.com" target="_blank" title="email Oliver"> <strong>oliver.couture@ipmvs.com</strong></a>.</em>
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</p>
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</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17203058&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fathena-diagnostics-v-mayo-collaborative-services-part-1-or-how-i-learned-to-stop-worrying-and-love-thttp://www.ipmvs.com/filewrapper/athena-diagnostics-v-mayo-collaborative-services-part-1-or-how-i-learned-to-stop-worrying-and-love-tTue, 12 Feb 2019 06:00:00 GMTProtecting Creativity by Artificial Intelligence: Part 3<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p>Artificial intelligence (AI) inventions and discoveries discussed in part 2 of this blog series, which may be protectable with patents, are only one form
of creativity by computers. AI can also generate written documents, music, and other creative works of authorship. See for example, <a href="https://www.cloem.com/" target="_blank" title="CLOEM">CLOEM</a> and <a href="http://alltheclaims.com/" target="_blank" title="All the Claims">AllTheClaims.com</a>. Even software
now exists that allows computers to use artificial intelligence to write patent applications, which long ago were deemed to be one of the most complex
types of legal documents.</p>
<p>Apart from patent protection, U.S. copyright law protects original works of authorship fixed in a tangible medium. However, the copyright statutes do not
define “author”. According to one U.S. Supreme Court decision, the author is the “person who translates an idea into a fixed, tangible expression”.
<em>Community for Creative Non-violence v. Reid,</em> 490 U.S. 730. 737 (1989).</p>
<p>In 2014, the U.S. Copyright Office issued rules precluding registration of works produced by a machine that operates without any input from a human author.
See<em> Compendium of</em> <em>U.S. Copyright Office Practices, 3<sup>rd</sup> Edition,</em> Section 313.2. This rule was issued in response to an
effort to register a selfie photograph taken by a monkey. This rule does not specifically apply where a computer or AI machine is programmed by humans
to create a work of art or authorship.</p>
<p>So while the copyright laws may not currently preclude protection for AI creative works, the policy of the Copyright Office does not permit a registration
of such work. But registration is not required for copyright protection, which exists from the moment the work is fixed in a tangible medium.</p>
<p>The last significant changes to the US copyright statues was in 1976, when computer technology was still relatively young. Perhaps it is time for Congress
to consider whether these laws need to be updated for computer generated works.</p>
<p>The United Kingdom, Ireland, and New Zealand have approved copyright protection for computer-generated creations. Germany and Australia have recent case
law which specifies that human creation is a prerequisite for copyright protection.
<br /> </p>
<p><strong><em><a href="https://www.ipmvs.com/attorneys/kirk-m-hartung">Kirk Hartung</a></em></strong><em> is Chair of the </em><strong><em><a href="https://www.ipmvs.com/services/mechanical-patents">Mechanical Patent Practice Group</a></em></strong><em> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit </em><strong><em><a href="https://www.ipmvs.com/">www.ipmvs.com</a></em></strong><em> or contact Kirk directly via email at </em><strong><em><a href="mailto:kirk.hartung@ipmvs.com">kirk.hartung@ipmvs.com</a></em></strong><em>.</em> </p>
<p>&nbsp;</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17193138&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fprotecting-creativity-by-artificial-intelligence-part-3http://www.ipmvs.com/filewrapper/protecting-creativity-by-artificial-intelligence-part-3Wed, 06 Feb 2019 06:00:00 GMTProtecting Creativity by Artificial Intelligence: Part 2<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p>U.S. Patent laws usually have two objectives: 1) To disclose inventions for the benefit of mankind; and 2) To incentivize inventors and investors. Thus,
patent protection serves a social benefit and a personal benefit.</p>
<p>Currently, thousands of patent applications are being filed in the U.S. Patent Office for inventions directed to AI, and despite the patent eligibility
issues, patents are being issued on AI inventions by humans. However, these patents are distinct from the possibility of inventions by computers using
AI. Whether such inventions can or should be protected by patents, raises many issues for these thinking machines.</p>
<p>An early AI pioneer, Stephen Thaler, developed the “Creativity Machine" in 1994. This machine is credited with an invention which is covered by US patent
5,852,815 issued in 1998, the first known patent on an AI-generated invention. The ‘815 patent lists Thaler as the sole inventor, though his Creativity
Machine is credited with generating the invention. Another computer scientist, John Koza, designed the Invention Machine based on genetic programming
and biological evolution. This machine made an invention covered by US patent 6,847,851 issued in 2005, listing 3 people as inventors.</p>
<p>Thus, inventions generated autonomously by computers using artificial intelligence are here. But how do the patent laws apply to such inventions?</p>
<p>The starting point is the first patent statute, 35 U.S.C. § 100, which defines “inventor” as the “individual” who invents or discovers the subject matter
of the invention. While a human wrote the software code for the computer, that programmer did not invent the solution to the problem. Rather, the solution
was generated by the AI. Thus, the computer may be the inventor, and not the programmer.</p>
<p><strong>Section:</strong>
<br />
</p>
<p>100 provides that "Whoever" invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Does “whoever” imply a person, and not a machine?</p>
<p>102 defines the conditions for patentability, particularly novelty, and states, “A person shall be entitled to a patent unless&hellip;" Thus, §102 seems
to preclude a patent for invention created by AI. However, §103 describes the non-obviousness requirement for patentability, and provides, “patentability
shall not be negated by the manner in which the invention was made." Thus, § 103 seems to be inclusive of AI generated inventions, and inconsistent
with §102.</p>
<p>103 raises another dilemma for AI inventions, by requiring that the differences between the claimed invention and the prior art must be nonobvious “to
a person having ordinary skill in the art&hellip;." Should or can an invention by a computer be tested or compared to a person skilled in the art?
If AI provides a novel and useful solution to a problem, which no human had solved, is that solution per se non-obvious?</p>
<p>In view of the anticipated growth applications for AI, perhaps it is time for Congress to revisit the patent statutes.</p>
<p>The patentability of AI generated inventions has not been addressed by either Congress or the courts. China’s New Generation Artificial Intelligence Development
Plan refers to AI Intellectual Property rights, so China appears to be ahead of the United States on such rights.</p>
<p>&nbsp;</p>
<p><strong><em><a href="https://www.ipmvs.com/attorneys/kirk-m-hartung" target="_blank" title="Kirk M. Hartung">Kirk Hartung</a></em></strong><em> is Chair of the </em><strong><em><a href="https://www.ipmvs.com/services/mechanical-patents" title="Mechanical Patents" target="_blank">Mechanical Patent Practice Group</a></em></strong><em> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit</em><strong><em><a href="https://www.ipmvs.com/" target="_blank" title="MVS Website"> www.ipmvs.com</a></em></strong><em> or contact Kirk directly via email at </em><strong><em><a href="mailto:kirk.hartung@ipmvs.com" target="_blank" title="email Kirk Hartung">kirk.hartung@ipmvs.com</a></em></strong><em>.</em> </p>
<p>&nbsp;</p>
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<p>&nbsp;</p>
<p>&nbsp;</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17193113&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fprotecting-creativity-by-artificial-intelligence-part-1-1http://www.ipmvs.com/filewrapper/protecting-creativity-by-artificial-intelligence-part-1-1Wed, 30 Jan 2019 06:00:00 GMTAdditional Update on the Government Shutdown<h3 class="hidden">Post By Gregory "Lars" Gunnerson</h3>
<p>As you are most likely aware, the United States government was shutdown for a total of 35 days, the longest shutdown in US history. The shutdown led to
380,000 federal workers being furloughed, and an additional 420,000 workers were required to work without any known payment dates during this period,
forcing many to find other paid work or protest against the extended period of the deadlock. However, the United States Patent &amp; Trademark Office
(USPTO) stayed open during this time. The USPTO continued to pay its employees because it had access to prior-year fee collections, and continued normal
operations for the duration of the government shutdown.</p>
<p>Immediately prior to the end of the shutdown, the USPTO stated they would have to cease operations in the second week of February if the shutdown were
to continue. Thankfully, the shutdown officially ended on Friday, January 25, 2019. However, it does not appear as if the USPTO is quite out of the
woods yet. President Trump vowed, “If we don’t get a fair deal from Congress, the government will either shut down on Feb. 15th again, or I will use
the powers afforded to me under the laws and Constitution of the United States to address this emergency”.</p>
<p>It is unclear if the USPTO will be able to get Congress to approve access to another year’s worth of funding in this interim three-week period and how
much money they have left from their prior-year fee collections. It is entirely possible the operation of the USPTO for the 2019 calendar year is not
a high priority for influential members of Congress at the moment. Thus, the USPTO could be negatively impacted if another government shutdown were
to occur.</p>
<p>We will inform you of any further developments should the USPTO choose to publish any further information regarding any adjustments to its operating status.</p>
<p><i><a href="https://www.ipmvs.com/attorneys/gregory-lars-gunnerson" target="_blank" title="Gregory Lars Gunnerson">Gregory “Lars” Gunnerson</a> is an Associate Patent Attorney in the <a href="https://www.ipmvs.com/services/mechanical-patents" target="_blank" title="Mechanical Patents">Mechanical and Electrical Patent Practice Group</a> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit the <a href="https://www.ipmvs.com/" target="_blank" title="MVS Website">MVS website</a> or contact Lars directly via email at <a href="mailto:gregory.gunnerson@ipmvs.com" target="_blank" title="email Greg">gregory.gunnerson@ipmvs.com</a>.</i>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17197039&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fadditional-update-on-the-government-shutdownhttp://www.ipmvs.com/filewrapper/additional-update-on-the-government-shutdownTue, 29 Jan 2019 06:00:00 GMTSupreme Court Rules: Sale of Invention can Prevent Patenting<h3 class="hidden">Post By Patricia Sweeney</h3>
<p>Following passage of the America Invents Act, questions arose as to whether a secret sale by the inventor more than one year before patenting was prior
art under section 102(a)(1) that would prohibit patenting of the invention. The language of the statute provides an invention cannot be patented if
“in public use, on sale, <em>or otherwise available to the public</em>before the effective filing date of the claimed invention.”&nbsp; Questions arose
as to whether the phrase “otherwise available to the public” qualified reference to the sale, meaning it had to make the invention available to the
public.&nbsp; The Supreme Court has now answered the question in <em>Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc</em>., No. 17-1229 (2019).&nbsp;
The unanimous opinion says the law did not change, and if a patent owner sells an invention to a third party before a patent application is filed,
even if that sale is confidential, the on-sale bar applies.</p>
<p>The Helsinn patent in this situation was to an intravenous formulation for reducing nausea and vomiting caused by chemotherapy treatments. The application
was filed January 30, 2003.&nbsp; On April 6, 2001,Helsinn entered into an exclusive license, supply and purchase agreement with MGI Pharma.&nbsp;
The existence of the agreement was made public but not the details.&nbsp; Certain patents filed prior to AIA were found valid by the district court,
as the invention was determined to not be ready for patenting.&nbsp; Post AIA patents were found were also found valid, the lower court finding the
sale was not public. The Federal Circuit reversed, saying it did not matter if the sale was confidential.&nbsp; The Supreme Court affirmed.</p>
<p>With this unanimous ruling it becomes clear that those wanting to file a patent application need to file prior to a sale or offer for sale, and to carefully
examine agreements regarding the invention to ensure they cannot be interpreted to constitute a sale.</p>
<p>&nbsp;</p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/patricia-a-sweeney" target="_blank" title="Pat A. Sweeney">Patricia A. Sweeney</a></strong> is an Intellectual Property Attorney in the <strong><a href="https://www.ipmvs.com/services/biotechnology-patents" target="_blank" title="Biotechnology Patents page">Biotechnology &amp; Chemical Patent Practice Group</a></strong> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <strong><a href="https://www.ipmvs.com/" target="_blank" title="MVS Website">the MVS website</a></strong> or contact Pat directly via email at <strong><a href="mailto:patricia.sweeney@ipmvs.com" target="_blank" title="email Pat Sweeney">patricia.sweeney@ipmvs.com</a></strong>.</em>
<br /> </p>
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<p>&nbsp;</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17195060&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fsupreme-court-rules-sale-of-invention-can-prevent-patenting-even-if-a-secret-salehttp://www.ipmvs.com/filewrapper/supreme-court-rules-sale-of-invention-can-prevent-patenting-even-if-a-secret-saleThu, 24 Jan 2019 06:00:00 GMTJury Orders Mongols Motorcycle Club to Forfeit Trademark<h3 class="hidden">Post By Brandon Clark</h3>
<p>The Mongols Nation motorcycle club was recently convicted of violations of the Racketeer Influenced and Corrupt Organization Act (RICO) resulting in a
California federal jury ordering the motorcycle club to forfeit its trademarked logo based on links between the image and the criminal activities carried
out by the group. The imagine incorporates the motorcycle club’s name along with a Genghis Khan-type character riding a motorcycle. </p>
<p>&nbsp;</p>
<p><img src="/images/Mongols-MC-Logo-.png">
<br />
</p>
<p>
<br /> U.S. Atty. Nicola Hanna called the verdict the first of its kind in the nation and said that seizing the Mongols trademarks would serve to “attack
the sources of a criminal enterprise’s economic power and influence.”</p>
<p>However, the case is not over. U.S. District Judge David Carter refused to order the trademarks forfeited and instead set a hearing for next month to address,
among other things, difficult First Amendment issues raised by the verdict.</p>
<p>In addition to forfeiting legal rights to the logo, the jury also determined that the government could keep certain items of personal property seized during
the course of the case which include the Genghis Khan image or the "word mark" consisting of the word "Mongols." This means that the government will
hold on to documents as well as certain items of clothing and patches displaying the image, which are typically prized possessions by motorcycle club
members.</p>
<p>One unique element of the case is that the defendant in the trial is the motorcycle club itself, not any of the specific members.&nbsp;If prosecutors successfully
take possession of the trademark, it likely would set a precedent that could be used against other organizations.
<br />
<br /> The case raises fascinating trademark issues around the use in commerce requirement of a trademark registration. If the federal government gains control
of the trademark, it seems highly unlikely that they will be making any commercial use of the trademark. However, without use in commerce, the trademark
would go abandoned and trademark rights would cease to exist. The underlying rationale put forth by the government is that the forfeiture of the trademark
will ultimately destroy the club’s “identity”. How the government intends to enforce this forfeiture is anything but clear and potentially inconsistent
with trademark rights.</p>
<p>The case is <em>USA v. Mongol Nation</em>, an Unincorporated Association, case number 2:13-cr-00106, in the U.S. District Court for the Central District
of California.</p>
<p><em>Brandon W. Clark is the Chair of the Copyright, Entertainment &amp; Media Law Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit <u><a href="http://www.ipmvs.com">www.ipmvs.com</a></u> or contact Brandon directly via email at</em>
<a href="mailto:brandon.clark@ipmvs.com"> </a><em><u><a href="mailto:brandon.clark@ipmvs.com">brandon.clark@ipmvs.com</a></u>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17195532&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fjury-orders-mongols-motorcycle-club-to-forfeit-trademarkhttp://www.ipmvs.com/filewrapper/jury-orders-mongols-motorcycle-club-to-forfeit-trademarkThu, 24 Jan 2019 06:00:00 GMTProtecting Creativity by Artificial Intelligence: Part 1<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p>Artificial intelligence has progressed to a state where, based upon software and algorithms written by humans, the computer itself can solve problems and
discover new and better ways to accomplish desired results. Artificial intelligence is being used in many industries, including agriculture, education,
manufacturing, and medicine. The inventions and creations of the computer itself, rather than a human, has huge potential for benefiting people in
all walks of life. However, the decades-old patent and copyright laws may not currently be sufficient, or applicable, for this new creativity by non-humans.</p>
<p>"Artificial intelligence" was coined by John McCarthy, an American computer scientist, in 1956. Today, artificial intelligence (AI) is generally understood
to mean intelligence by machines which mimic cognitive human functions, such as learning and problem-solving. More specifically, AI is a field of computer
science, including such things as machine learning, natural language processing, speech processing, expert systems, robotics, and machine vision. Experts
speculate that AI worldwide revenues will grow from approximately 8 billion in 2016 to 47 billion in 2020, and as much as 15 trillion by 2040. Thus,
there is tremendous value in protecting AI inventions and creations. The next post in this blog series will focus on protection form AI generated inventions,
with a separate post directed to protection of AI creations.</p>
<p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/kirk-m-hartung" target="_blank" title="Kirk M. Hartung">Kirk Hartung</a></strong><em> is Chair of the <strong><a href="https://www.ipmvs.com/services/mechanical-patents" target="_blank" title="Mechanical Patents">Mechanical Patent Practice Group</a></strong> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit<strong><a href="https://www.ipmvs.com/" target="_blank" title="MVS Website"> www.ipmvs.com</a></strong> or contact Kirk directly via email at <strong><a href="mailto:kirk.hartung@ipmvs.com" target="_blank" title="email Kirk Hartung">kirk.hartung@ipmvs.com</a></strong>.</em></em>
<br />
</p>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17193106&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fprotecting-creativity-by-artificial-intelligence-part-1http://www.ipmvs.com/filewrapper/protecting-creativity-by-artificial-intelligence-part-1Wed, 23 Jan 2019 06:00:00 GMTOh Na Na What’s My Name?: Rihanna Sues Father for Trademark Misuse of “Fenty” Surname<h3 class="hidden">Post By Sarah Dickhut</h3>
<p>Robyn Rihanna Fenty (“Rihanna”) has filed a lawsuit against her father, Ronald Fenty, over the use of the name “Fenty.” Ronald Fenty uses the family surname
in his company<a href="http://fentyentertainment.com/"> Fenty Entertainment</a>, a company which recruits artistic talent and also develops television
programs, motion pictures, and record producing. Over the last several years Rihanna has developed her label via Fenty cosmetics (<a href="https://www.fentybeauty.com/">Fenty Beauty</a>),
lingerie (<a href="https://www.savagex.com/allthingsrihanna">Savage X Fenty</a>), and other commercial endeavors.</p>
<p>Rihanna is suing for false designation of origin, false advertising and invasion of her privacy and publicity rights. Specifically, Rihanna asserts that
her father’s actions irreparably damaged her brand. Rihanna alleges that her father and his partner, Moses Perkins, falsely represented their company’s
affiliation with her. The suit asserts that Ronald Fenty “does not have, and never has had, authority to act on Rihanna’s behalf, nor has he ever been
authorized to use her name, intellectual property or publicity rights.” Among the actions taken without Rihanna’s permission include Fenty and Perkins
allegedly attempting to negotiate a series of 15 shows in Latin America, and other shows in Las Vegas and Las Angeles without her permission.</p>
<p>Trademark infringement suits over surnames are typically the result of two situations: disputes over the use of a family name by a junior user, or common
surnames being used by two different companies in similar industries. It can be difficult to successfully register a family surname as a trademark,
and even when a family name is registered it is difficult to stop others from using it because the law generally favors the right of a person to use
their name as a source identifier of good/services. However, if a surname has “acquired distinctiveness” and/or “secondary meaning,” such that it is
perceived by the public as a recognizable source identifier, it is possible to exclude others from using the name. For example, names such as Disney,
Gucci, and Ford are registered trademarks.</p>
<p>In this case, Rihanna seeks to stop Fenty and Perkins from using her name and the Fenty brand, and she is further seeking damages and attorney’s fees.
To be successful, Rihanna will need significant evidence that her “Fenty” brand is distinctive and identifiable by the public as associated with Rihanna.</p>
<p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/sarah-m-dickhut" target="_blank" title="Sarah M. Dickhut">Sarah Dickhut</a></strong> is an Associate Attorney in the <strong><a href="https://www.ipmvs.com/services/biotechnology-patents" target="_blank" title="Biotechnology Patents page">Biotechnology &amp; Chemical Patent Practice Group</a></strong> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <a href="http://www.ipmvs.com/"><strong>www.ipmvs.co</strong><strong>m</strong></a> or contact Sarah directly via email at </em><strong><em><a href="mailto:sarah.dickhut@ipmvs.com"><em>sarah.dickhut@ipmvs.com</em></a></em></strong><em>.</em> </p>
</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17193243&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252foh-na-na-what-s-my-name-rihanna-sues-father-for-trademark-misuse-of-fenty-surnamehttp://www.ipmvs.com/filewrapper/oh-na-na-what-s-my-name-rihanna-sues-father-for-trademark-misuse-of-fenty-surnameMon, 21 Jan 2019 06:00:00 GMTQuestions Remain for Venue Considerations Post TC Heartland<h3 class="hidden">Post By Luke T. Mohrhauser</h3>
<p>A recent decision in a patent infringement case involving John Deere suing both AGCO Corporation and its subsidiary, Precision Planting LLC, in the District
of Delaware illustrates that not all answers from the Supreme Court's 2017 decision of<em> TC Heartland LLC v. Kraft Foods Grp. Brands LLC</em> are
clear. The <em>TC Heartland </em>decision included, in part, that "A patent infringement case "may be brought in the judicial district where the defendant
resides, or where the defendant has committed acts of infringement and has a regular and established place of business." 28 U.S.C. § 1400(b). Under
§ 1400(b), a domestic corporation "resides" only in its state of incorporation.<em>TC Heartland LLC v. Kraft Foods Grp. Brands LLC, </em>137 S. Ct.
1514, 1521 (2017).</p>
<p>In the Deere v. ACGO/Precision Planting case, AGCO and Precision Planting moved to transfer the case from Delaware to the Central District of Illinois.
While both AGCO and Precision Planting are incorporated in Delaware, Precision Planting is headquartered in Central Illinois, while AGCO is headquartered
in Duluth, Georgia. AGCO does own another subsidiary, GSI, which has three facilities in the Central District of Illinois, but otherwise does not have
its own locations in the District.</p>
<p>The court first noted that there was no question that Deere could have sued Precision Planting in Illinois, but held that there is a "real question" as
to if Deere could have sued AGCO in the Central District of Illinois. Based upon the<em> TC Heartland</em> decision, along with other statutes, the
court stated that AGCO "resides" only in Delaware, and would only transfer the case if there was no "real question" that AGCO has a "regular and established
place of business" in the Central District of Illinois.</p>
<p>The analysis of a "regular and established place of business" relied upon the case of<em>In re Cray Inc., </em>871 F.3d 1355, 1362 (Fed. Cir. 2017). The
case states that there is no precise rule, but each case depends on its own facts. There are some statutory requirements, however. First, "[t]he statute
requires a 'place."'<em>Id. </em>"The second requirement ... is that the place 'must be a regular and established place of business."'<em>Id. </em>"[T]he
third requirement" is that the place must be "a place <em>of the defendant." Id.</em>at 1363 (emphasis in original).</p>
<p>In the Deere case, the issue at argument was whether GSI's locations in the Central District of Illinois, as a subsidiary owned by AGCO, constituted a
"place" of AGCO.<em> Cray</em> did not discuss this consideration, and the court stated that it was not aware of the Supreme Court nor the Federal
Circuit ruling on whether a defendant's subsidiary's "place of business" could be one that "the defendant has" for purposes of§ 1400(b). Therefore,
this would be a question of first impression, which the court considered to be a "real question" about whether Deere could have sued AGCO in the Central
District of Illinois. Accordingly, the motion to transfer was denied.</p>
<p>Therefore, while <em>TC Heartland</em> was instructive on where patent infringement lawsuits should be filed, there remains at least some questions, such
as, is it the location of the parent, subsidiary, incorporation, or dependent upon the specific facts of a case that ultimately decide the location.
These are important considerations to determine when deciding to file a lawsuit, and working with a Patent Attorney to get all of the information related
to all parties is key so that a party filing the suit files in the proper jurisdiction.</p>
<p><em><strong><a title="Luke T. Mohrhauser" href="https://www.ipmvs.com/attorneys/luke-t-mohrhauser" target="_blank">Luke T. Mohrhauser</a></strong> is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit<strong><a title="MVS Website" href="http://www.ipmvs.com/" target="_blank"> www.ipmvs.com</a></strong> or contact Luke directly via email at <strong><a title="email Luke" href="mailto:luke.mohrhauser@ipmvs.com" target="_blank">luke.mohrhauser@ipmvs.com</a></strong>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17193036&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fquestions-remain-for-venue-considerations-post-tc-heartlandhttp://www.ipmvs.com/filewrapper/questions-remain-for-venue-considerations-post-tc-heartlandFri, 18 Jan 2019 06:00:00 GMTUpdate on the Government Shutdown<h3 class="hidden">Post By Gregory "Lars" Gunnerson</h3>
<p>In December 2018, the United States Patent &amp; Trademark Office (USPTO) reported it would stay open at least for a temporary time in the event of a government
shutdown. Thus far, the USPTO closed only on December 24, 2018 (Christmas Eve), as a result of an executive order issued by President Trump. Christmas
Eve fell on a Monday and would normally be a day&nbsp;in which the USPTO is open, as Christmas Eve is usually not considered&nbsp;a federal holiday.
The USPTO&nbsp;posted on their website: “In the event that parts of the federal government experience a lapse of appropriated funding, the USPTO remains
open for business as normal. This is possible because the agency has access to prior-year fee collections, which enables the USPTO to continue normal
operations<strong> for a few weeks</strong>.” As of today, January 11, 2019, the USPTO remains open.
<br />
</p>
<p>The New York Times reported on Wednesday, January 9th that President Trump, “stormed out of a White House meeting with congressional leaders on Wednesday
after Speaker Nancy Pelosi said she would not fund a border wall even if he agreed to reopen the government, escalating a confrontation that has shuttered
large portions of the government for 19 days and counting.” Without an end to the government shutdown in sight, and it&nbsp;nearing&nbsp;mid-January,
it is unclear how long the USPTO can continue operations while the government is shut down.</p>
<p>In the event the USPTO closes as a result of the government shutdown, the USPTO has indicated a small staff will continue to work to accept new applications
and maintain IT infrastructure, among other functions. Thus, it appears Applicants will still need to meet any and all applicable deadlines.</p>
<p>We will inform you of any further developments should the USPTO choose to publish any further information regarding any adjustments to the USPTO’s operating
status.</p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/gregory-lars-gunnerson" target="_blank" title="Gregory Lars Gunnerson">Gregory “Lars” Gunnerson</a></strong> is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <strong><a href="http://www.ipmvs.com/">www.ipmvs.com</a></strong> or contact Lars directly via email at <strong><a href="mailto:gregory.gunnerson@ipmvs.com">gregory.gunnerson@ipmvs.com</a></strong>.</em>
</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17178270&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fupdate-on-the-government-shutdownhttp://www.ipmvs.com/filewrapper/update-on-the-government-shutdownFri, 11 Jan 2019 06:00:00 GMTUSPTO Updates 112 Guidance: Presumption Shift of Functional Limitations<h3 class="hidden">Post By Oliver Couture<br /></h3>
<p>
<p>Recently, the United States Patent &amp; Trademark Office (USPTO) has announced plans to update their guidance on functional claim language under 112
and will after a period of public input. This update will likely require a more detailed specification for functional claims or result in narrower
claims.</p>
</p>
<p>Under the proposed 112 guidelines, which are aimed more specifically toward computer claims, functional language in claims is going to be presumed to be
means plus function claims and analyzed for written description under 112(f). This is a change from before in that the key words, such as “means” or
“step” do not need to be included for the claim to be considered a means plus function claim. To overcome the presumption, the practitioner must then
either argue that they have included sufficient structure performing the function in the claim or amend to include sufficient structure in the claim.</p>
<p>Further, the guidelines say that support for the structures, for computer related claims, should be in the form of an algorithm, flow chart, mathematical
equation, or the like. Also, specific hardware or data structures should also be described, such as a relational database or tables and how they interact
with the algorithm. Reference to generic hardware, such as a processor, will not provide sufficient structural support for functional language.</p>
<p>While the guidelines do not address other areas, such as biotech, there is still an implication that additional structural written description support
may be needed when trying to claim its function. For example, it may not be possible to claim an enzyme function or a promoter in generic terms without
describing, if available, the active site of an enzyme or binding motifs of a promoter. Further, describing in the specification how mutagenesis may
affect the function in more specific terms may also be required.</p>
<p>Given these new guidelines, the USPTO appears to be requiring more robust specifications to support functional claim language. This seems to be part of
Director Lancu’s push for higher quality patents with more reliability in what is claimed by required a more robust specification or narrower claims.</p>
<p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/oliver-p-couture-ph-d">Oliver P. Couture</a></strong> is an Intellectual Property Attorney in the <strong><a href="https://www.ipmvs.com/services/biotechnology-patents">Biotechnology &amp; Chemical Patent Practice Group</a></strong> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit<a href="https://www.ipmvs.com/"> <strong>the MVS website</strong></a> or contact Oliver directly via email at<a href="mailto:oliver.couture@ipmvs.com"> <strong>oliver.couture@ipmvs.com</strong></a>.</em>
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</p>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17177155&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fuspto-updates-112-guidance-presumption-shift-of-functional-limitationshttp://www.ipmvs.com/filewrapper/uspto-updates-112-guidance-presumption-shift-of-functional-limitationsThu, 10 Jan 2019 06:00:00 GMTUSPTO Updates 101 Guidance: Making Abstract More Concrete<h3 class="hidden">Post By Oliver Couture</h3>
<p>Recently the United States Patent &amp; Trademark Office (USPTO) has announced plans to update their guidance on 101 issues and will do so after a period
of public input in order to increase clarity during prosecution. This update will replace, not just update, several sections of MPEP 2106. The update
will also provide practitioners a more solid ground to argue 101 issues during prosecution.</p>
<p>The first section is MPEP 2106.04(II), which is Step 2A (<em>Alice</em>/<em>Mayo</em> Step 1) for determining if a claim is directed to a judicial exception.
This will replace all versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas” and the guidance issued prior to R-08.2017,
so these should no longer be relied upon.</p>
<p>Rather, the USPTO has turned Step 2A into a two-prong test. The first prong is determining if the claim actually recites one of the members belonging to
a USPTO defined groups of judicial exceptions. If the claims do not recite one of the judicial exceptions, then, except for rare circumstances, the
claim should not be treated as reciting an abstract idea and should be eligible subject matter.</p>
<p>However, if the claim is found to recite a judicial exception, then it will continue into the second, newly created, prong. This new prong determines if
the judicial expectation is being used for a practical application, and if so, then it is eligible subject matter. Even if the claim recites additional
well-understood, routine, or conventional activities, it is still eligible subject matter, as this is assessed in Step 2B, which has not changed. This
change seems to be an effort to put well-understood, routine, or conventional activities back where they belong, in 102 and 103 analysis instead of
subject matter eligibility analysis.</p>
<p>Given these new guidelines, it should be easier for practitioners to write or amend claims to get out of a subject matter rejection at Step 2A by incorporating
the exception into a process or system which uses the law of nature, natural phenomena, or abstract idea in some way.</p>
<p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/oliver-p-couture-ph-d">Oliver P. Couture</a></strong> is an Intellectual Property Attorney in the <strong><a href="https://www.ipmvs.com/services/biotechnology-patents">Biotechnology &amp; Chemical Patent Practice Group</a></strong> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit<a href="https://www.ipmvs.com/"> <strong>the MVS website</strong></a> or contact Oliver directly via email at<a href="mailto:oliver.couture@ipmvs.com"> <strong>oliver.couture@ipmvs.com</strong></a>.</em>
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</p>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17177153&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fuspto-updates-101-guidance-making-abstract-more-concretehttp://www.ipmvs.com/filewrapper/uspto-updates-101-guidance-making-abstract-more-concreteTue, 08 Jan 2019 06:00:00 GMTHas Alice Killed all the Fun?<h3 class="hidden">Post By Oliver Couture</h3>
<p>Games, both the physical board and the methods of playing them, have had a long history of patent eligibility. For example, in 1904 Elizabeth Phillips
patented the game board for Landlord’s Game, which was then later controversially patented by Charles Darrow in 1934 as Monopoly. While both of these
patents were to the physical boards with their distinctive spaces, in 1994 Richard Garfield patented a method of playing cards which gave rise trading
card games, such as Pokemon. Then in 1998, Metthew Kirby patented the method for playing word-based card games, such as Apples-to-Apples and Cards
Against Humanity. Both of the Garfield and Kriby patents lived out their full and happy terms. However, the days of patenting new games may be over.</p>
<p>First in 2016, the United States Court of Appeals for the Federal Circuit (CAFC) decided in <em>In re: Ray Smith, Amanda Tears Smith</em>. In <em>Smith</em>,
the CAFC held that gambling games were abstract ideas based on <em>Alice </em>because gambling is a method of exchanging financial obligations. The
CAFC then held that since the game used a standard deck of cards, there was no inventive concept regardless of whether or not the rules were novel
or non-obvious, but could envisage that a game using a new or original deck of cards could potentially survive <em>Alice</em>.</p>
<p>However, On December 26, 2018, the CAFC in <em>In re: Marco Guldenaar holding B.V.</em> held that claims reciting a method of playing a dice game, using
specialized dice and involving wagering, were properly rejected by the PTO under § 101. The CAFC in <em>Guldenaar</em>, citing to <em>Smith</em>, held
that the dice game was also directed to the abstract ideas of not only a method of financial obligations, but also a method of organizing human activity.
Further, the CAFC held that the specialized dice had no weight as they fell under the printed matter doctrine because what was on the faces of the
dice is not functionally related to the substrate of the dice and printed matter falls outside of § 101. Therefore, it seems that even if <em>Smith</em> had used a novel deck of cards, what would be on the face of the cards would&nbsp;also be&nbsp;printed matter, and <em>Smith</em> would still be ineligible
subject matter, seeming to contradict their finding that a novel deck of cards may survive <em>Alice</em>.</p>
<p>This is reinforced by the concurrence in <em>Guldenaar</em>, in which Judge Mayer wrote, “claims directed to dice, card, and board games can never meet
the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.” It appears that <em>Alice</em> has become the Red Queen and has chopped the head off of at least Class 463, Amusement devices: Games.</p>
<p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/oliver-p-couture-ph-d">Oliver P. Couture</a></strong> is an Intellectual Property Attorney in the <strong><a href="https://www.ipmvs.com/services/biotechnology-patents">Biotechnology &amp; Chemical Patent Practice Group</a></strong> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit<a href="https://www.ipmvs.com/"> <strong>the MVS website</strong></a> or contact Oliver directly via email at<a href="mailto:oliver.couture@ipmvs.com"> <strong>oliver.couture@ipmvs.com</strong></a>.</em>
<br />
</p>
<br />
</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17175940&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fhas-alice-killed-all-the-funhttp://www.ipmvs.com/filewrapper/has-alice-killed-all-the-funMon, 07 Jan 2019 06:00:00 GMT“Hottest Fashion Brand in the World” Sues Children’s Clothing Company for Trademark Infringement<h3 class="hidden">Post By Nicholas Krob</h3>
<p>In December 2018, high-end streetwear fashion label Off-White filed a lawsuit in the Southern District of New York against children’s clothing company
Brooklyn Lighthouse, claiming the Brooklyn company infringed upon Off-White’s trademarks and trade dress.</p>
<p>Off-White’s products typically retail between $150 and $2,500 and feature “distinctive graphic and logo-heavy apparel designs.”&nbsp; Such graphics include
the “Off-White” name, as well as “a unique design mark comprised of alternating parallel diagonal lines” and “a unique design mark comprised of two
intersecting dual-sided arrows,” examples of which are pictured below.</p>
<p><strong><img src="/images/NJK_1.jpg"><br /></strong>
</p>
<p>Since its launch approximately five years ago, Off-White has experienced great success, even being referred to by<em>Lyst</em> magazine as “the hottest
fashion brand in the world.”&nbsp; Yet Off-White claims that with this success has come competitors unfairly attempting to benefit from Off-White’s
acquired goodwill and reputation.&nbsp; One such alleged competitor is Brooklyn Lighthouse.</p>
<p>Brooklyn Lighthouse markets itself as providing “trendy fashion for young children,” selling apparel that seemingly evokes various high-end fashion brands.&nbsp;
In its lawsuit filed earlier this month, Off-White alleges Brooklyn Lighthouse has been advertising and selling products using marks identical or confusingly
similar to those of Off-White.&nbsp; Some examples of such products are shown below.</p>
<p><strong><img src="/images/NJK_2.jpg"><br /></strong>
</p>
<p>While Brooklyn Lighthouse has not yet filed a response to Off-White’s complaint, this appears to be a clear example of counterfeit/unauthorized products
designed to trade off the goodwill and reputation of a luxury brand&mdash;a problem pervasive in the fashion industry.</p>
<p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/nicholas-j-krob" target="_blank" title="Nicholas J. Krob">Nicholas Krob</a></strong> is an Intellectual Property Attorney at McKee, Voorhees &amp; Sease, PLC specializing in Litigation, Licensing, and Trademarks. For additional information please visit <strong><a href="https://www.ipmvs.com/">www.ipmvs.co</a></strong><strong><a href="https://www.ipmvs.com/">m</a></strong> or contact Nick directly via email at </em><strong><em><a href="mailto:nicholas.krob@ipmvs.com"><em>nicholas.krob@ipmvs.com</em></a></em></strong><em>.</em> </p>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17173981&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fhottest-fashion-brand-in-the-world-sues-children-s-clothing-company-for-trademark-infringementhttp://www.ipmvs.com/filewrapper/hottest-fashion-brand-in-the-world-sues-children-s-clothing-company-for-trademark-infringementWed, 02 Jan 2019 06:00:00 GMTProtecting Your Nanotechnology Inventions - Part 4: Don’t Forget About Trade Secret Protection<h3 class="hidden">Post By Jonathan L. Kennedy</h3>
<p>When you have a new invention, the right question to ask at the outset is whether you want to consider patenting it. This is important because many common
activities in research and commercialization can create a bar to patent protection or at least start a one-year clock by which a patent must be filed.
Some of these common activities include presenting or publishing on the technology, testing the technology with a customer or commercial partner, selling
product, or publicly using the technology. While there is so much early focus on preliminary patent questions, a thorough analysis should also include
an assessment of whether trade secret protection may be suitable.</p>
<p>In fact, even where a product may be patentable, there can be aspects of the technology kept as trade secret. To file a patent, there is an obligation
to&nbsp;fully describe how to make and use&nbsp;the invention. Further, there is an obligation to disclose the best mode of the invention. In some
circumstances that may mean that you must choose between patent and trade secret protection. In other circumstances, you may be able to seek patent
protection on&nbsp;one aspect of a new technology while keeping other aspects of the technology secret. There is often technical know-how that is acquired
while developing patentable technology that may be subject to trade secret protection. Additionally, there are instances where certain technologies
and improvements are not patentable, but a commercial advantage can be gained and innovation can be monetized by keeping aspects of the technology
under trade secret protection.</p>
<p>Certain basic criteria must be met to qualify for trade secret protection. Those criteria typically include at least the following:</p>
<ul>
<li>Information that actually or potentially provides independent economic value from not being generally known;</li>
<li>The owner has taken reasonable measures to keep the information secret; and</li>
<li>The information is not readily ascertainable through proper means.</li>
</ul>
<p>Such information can often include scientific, technical, engineering, economic, financial, and business information. A unique aspect of trade secret protection
is that there are both state and federal protections available. This means that there is the potential for both state and federal actions to&nbsp;preserve
a trade secret. This can also complicate whether the information qualifies as a trade secret or whether additional elements may be required to establish
trade secret protection in a particular state.</p>
<p>One consideration particularly applicable to nanotechnological inventions is whether there are aspects that are difficult to reverse engineer. There is
certainly some information that can be readily reverse engineered through analytical techniques and other information that is extremely difficult to
reverse engineer. Considering what aspects of your technology would be difficult to reverse engineer is a great place to start in evaluating whether
trade secret protection may be suitable. The answer to that question may inform what parts of your technology you want to make public.</p>
<p>To keep trade secret protection a possibility, it is important to have precautions in place at all stages of research and development. What precautions
are needed vary based on many things, including the nature of your research (public vs. private), nature of research facilities, who has access to
sensitive information, etc. Certain precautions can always be helpful: limiting access to confidential information; having non-disclosure agreements
in place, having secured and limited access to research facilities or at least labs where confidential research occurs; and having a process in place
for early identification of potential trade secret information.&nbsp; Whether trade secret protection is possible and advisable for a particular technology
can be evaluated with your intellectual property attorney.</p>
<p>This is the final post in a four-part series. The first three posts can be accessed at the following links: “<a href="https://www.filewrapper.com/filewrapper/protecting-your-nanotechnology-inventions-part-1-defining-your-space?filewrapper=true">Protecting Your Nanotechnology Inventions – Part 1: Defining Your Space</a>”;
“<a href="https://www.filewrapper.com/filewrapper/protecting-your-nanotechnology-inventions-part-2-defining-your-invention">Protecting Your Nanotechnology Inventions – Part 2: Defining Your Invention</a>”;
and “<a href="https://www.filewrapper.com/filewrapper/protecting-your-nanotechnology-inventions-part-3-enabling-your-invention?filewrapper=true" target="_blank" title="Protecting Your Nanotechnology Inventions - Part 3: Enabling Your Invention">Protecting Your Nanotechnology Inventions – Part 3: Enabling Your Invention</a>.”</p>
<p>
<p><strong><em><a href="https://www.ipmvs.com/attorneys/jonathan-l-kennedy">Jonathan L. Kennedy</a></em></strong><em>,</em><em> is a Patent Attorney in the </em><strong><em><a href="https://www.ipmvs.com/services/biotechnology-patents">Biotechnology &amp; Chemical Practice Group</a></em></strong><em> at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit</em><strong><em><a href="http://www.ipmvs.com/"> www.ipmvs.com </a></em></strong><em>or contact Jonathan directly via email at </em><strong><em><a href="mailto:jonathan.kennedy@ipmvs.com">jonathan.kennedy@ipmvs.com</a></em></strong><em>.</em> </p>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17173518&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fprotecting-your-nanotechnology-inventions-part-4-don-t-forget-about-trade-secret-protectionhttp://www.ipmvs.com/filewrapper/protecting-your-nanotechnology-inventions-part-4-don-t-forget-about-trade-secret-protectionMon, 31 Dec 2018 06:00:00 GMTCan Competitors Use Your Trademarks in their Webpages or as AdWords to Drive Business to their Webpages?<h3 class="hidden">Post By Mark D. Hansing</h3>
<p>The article below discusses state of the law regarding competitors using your trademarks in their advertising or web pages, or competitors purchasing your
trademarks as what are called “AdWords” or "keywords" so that your competitor’s website comes up higher in a search engine search when people use your
trademarks as search terms.</p>
<h4>The Problem</h4>
<p>Many of our clients are rightfully concerned about competitors using their trademarks in the above ways. Shouldn't this be trademark infringement?</p>
<h4>Short Answer</h4>
<p>The law hesitates to make illegal <u>any</u> use of your trademarks by a competitor. It allows fair, comparative advertising, even when it specifically
calls out your trademark. To prevail, you would have to show potential consumers are likely to be confused. This can be difficult if the competitor
prominently displays its trademarks and only uses your trademark to discuss a comparison of their products with yours. It can be difficult to convince
a judge or jury that confusion is likely when the competitor’s trademark is clear and prominent. One way to prevail is to prove numerous instances
of <u>actual confusion</u>&nbsp; -- e.g. witnesses or documents that show your prospective customers thought your competitor was you, based on their
use of your trademark. But, again, this is tough if the competitor uses its trademark.</p>
<p>Similarly, Courts have hesitated to stop others from purchasing your trademarks as keywords or AdWords. Although some courts have disagreed, most courts
hold this is not trademark infringement. Keywords or AdWords are normally never seen by the public. They are simply auctioned by search engine providers
like Google. When people put your trademark into a search request, the owner of purchased AdWords increases their chance for priority placement in
the search results (their website comes up higher in the results). Most courts fail to find any likelihood that potential customers would be confused
because of it. In fact, some courts have boldly stated that in an Internet–savvy world, we all expect that search results based on our search terms
may bring up sites we are not looking for or are competitive with the one we are looking for, and that we are sophisticated enough through self–help
to drill deeper to find what we were really looking for. This view seems debatable, but recent commentaries on this issue conclude it is the present
status of the law.</p>
<p>So, can you sue and likely win when a competitor either uses your trademark in comparative advertising or purchases search engine AdWords including your
trademarks? It is not impossible, but cases usually&nbsp;require evidence that consumers are <u>actually confused</u>, and not simply an argument that
there is the possibility of confusion.</p>
<p>If you do not have compelling actual confusion evidence, typical techniques of trying to show likelihood of confusion include a professional trademark
survey. There are companies that run these. They identify prospective customers for your products and services and present questions designed to probe
the potential for confusion based on the competitor’s use of your trademark. These take some time and could cost tens of thousands of dollars. Also,
courts like to see at least 10% to 20% potential consumer confusion. Competitors can also run their own surveys and sometimes they come up with different
results.</p>
<h4>Initial Interest Confusion</h4>
<p>For a while, trademark owners got some courts to agree that even if savvy Internet users eventually figured out the website with the highest ranking was
not the one their search was looking for, it was trademark infringement or unfair competition based on what is called “initial interest confusion”.
As the term implies, it was considered evidence of actual confusion – for at least some period of time. Essentially the argument was this was a clear,
intentional attempted diversion of customers. On the face of it, it seems squarely to fit the test of trademark infringement.</p>
<p>In the case of <em><a href="https://en.wikipedia.org/wiki/1-800_Contacts,_Inc._v._Lens.com,_Inc.">1-800 Contacts, Inc. v. Lens.com, Inc.</a></em>,<a href="https://www.leagle.com/decision/infco20130716080">722 F.3d 1229</a> (10th Cir. 2013), LENS.com showed in court over 1,000 initial interest confusion events after 1–800–Contacts bought Google AdWords with the Lens.com
trademarks. Lens.com argued that contact lens purchasers ordering online want to do it quickly and, thus, this is clear actual confusion and economic
damage. However, in today's sophisticated digital world, through computer forensics 1–800–Contacts showed only 25 of those 1000 (1.5%) actively clicked
through to their website. The court found that this was insufficient to show meaningful actual confusion and Lens.com lost.</p>
<h4>Takeaways</h4>
<p>Even with provable evidence of possible confusion because of purchased AdWords, the courts are still skeptical unless a substantial number of click-throughs
to the competitor’s site resulted in provable lost business. Therefore, unless the competitor uses your trademark in substitution of theirs (e.g. their
trademark never appears on their website, which is rare) without strong high quantity evidence of actual consumer confusion, it is difficult to prevail.</p>
<p>Some commentators go as far as to say that the best course of action is self-help is recommended--that you should bid on as many AdWords as you can so
that hopefully you get them and not competitors, or at least it forces the competitor to spend more money to out-bid you.</p>
<p>At a minimum, it is good to be aware of this paid search marketplace. To the extent it is possible and economically reasonable to purchase AdWords of your
trademarks, it is probably good practice. Otherwise, always watch for and document any events that could be considered actual confusion and evaluate
with trademark counsel if it rises to a level to take action.</p>
<p><em><a title="Mark D. Hansing" href="http://www.ipmvs.com/attorneys/mark-d-hansing" target="_blank"><strong>Mark D. Hansing</strong></a> is a Patent Attorney and Member in the <a title="Mechanical Patent Group" href="http://www.ipmvs.com/services/mechanical-patents" target="_blank"><strong>Mechanical Patent Practice Group</strong></a> and has been with MVS since 1981. For more information, please visit the <a title="MVS website" href="https://www.ipmvs.com/" target="_blank"><strong>MVS website</strong></a> or contact Mark directly via email at <a title="email Mark" href="mailto:mark.hansing@ipmvs.com" target="_blank"><strong>mark.hansing@ipmvs.com</strong></a>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17157290&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fcan-competitors-use-your-trademarks-in-their-web-pages-or-as-adwords-to-drive-business-to-their-web-http://www.ipmvs.com/filewrapper/can-competitors-use-your-trademarks-in-their-web-pages-or-as-adwords-to-drive-business-to-their-web-Fri, 28 Dec 2018 06:00:00 GMTLight at the End of the Tunnel? Expanding Concepts of What is Patentable Subject Matter<h3 class="hidden">Post By Patricia Sweeney</h3>
<p>Justice Warren Burger in the seminal case of <em>Diamond v. Chakrabarty</em> found that Congress had intended patentable subject matter to “include anything
under the sun that is made by man,” holding that an engineered bacterium used in treating oil spills was patentable. <em>Diamond v. Chakrabarty</em>,
447 US 303 (1980). Yet interpretation of subsequent decisions on what is patentable by the US Patent Office has been criticized as overly restricting
what can be patented and crimping innovation. Just this year court decisions and actions by the US Patent Office have offered hope for improved predictability
and clarity especially as it relates to products of nature and abstract ideas and offers guidance on how to craft claims to avoid a section 101 rejection.</p>
<p>The issue is whether a claim attempts to patent an abstract idea that could be wholly performed in a person’s head or a law or phenomena of nature, which
cannot be patented. 35 U.S.C. §101. In<em> Mayo v. Prometheus Labs</em>, 566 US 66 (2012) a method for optimizing dosage of drugs by measuring the
level of metabolites in blood was found invalid. In <em>Alice Corp. v. CLS Bank Int’l</em>, 573 US ___ 134 S. Ct. 2347 (2014) a two-step analysis was
presented.</p>
<p>As modified since <em>Alice</em> the steps are as follows.&nbsp;</p>
<p>Step 1:&nbsp; are the claims directed to a process, machine, manufacture or composition of matter?&nbsp;</p>
<p>If no, it is not patentable.</p>
<p>If yes, Step 2a asks: is it an abstract idea, law of nature or product of nature? If the answer is yes, Step 2b asks if the claim recites something “significantly
different” or “significantly more” than the judicial exception to patentability.&nbsp;</p>
<p>The 2b step is by its nature fraught with subjectivity and faced varying analysis as to whether the standard is met. In 2014, new US Patent Office guidelines
presented gunpowder as an example of non-patentable subject matter. Among the organizations calling for legislation to address subject matter eligibility
interpretation is the American Bar Association Intellectual Property Law Section (Letter of March 28, 2017), the Intellectual Property Owners group
(IPO Daily News, January 2017) and the American Intellectual Property Law Association AIPLA (May 2017).</p>
<p>While these efforts continue, court decisions and recent efforts by the USPTO Director have provided tools to combat such rejections and a hint of relief
to come.</p>
<p>In a decision this year, the Federal Circuit held that a diagnosing method was patentable in reciting an administration step. The patent in question was
to a method of treating schizophrenia patients with iloperidone. The dosage is adjusted to avoid adverse cardiac impact by determining if the patient
has lower activity of a gene called CYP23D6.<em> Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals Int’l</em>, 887 F.3d 1117 (Fed. Cir. 2018).
It distinguished the diagnosis claim of<em> Mayo</em>, saying that claim was not directed to a new method of treating a disease but to a diagnostic
method. Here, the claims do not “tie up the doctor’s subsequent treatment decision” but recite a dosage regimen.&nbsp;<em>Id</em> .at 1135. It also
noted that in the <em>Myriad</em> decision, which found naturally occurring DNA to be unpatentable products of nature, even if isolated, the Supreme
Court was careful to state method claims were not implicated in its decision (citing <em>Ass’n for Molecular Pathology v. Myriad Genetics, Inc</em>.
569 U.S. 569, 580 (2012)). Also this year, the Federal Circuit stated that simply because steps are known does not necessarily mean they are conventional.&nbsp;<em>Exergen Corp. v. Kaz USA, Inc</em>.
2016-2315, 2016-2341 (Fed Cir. 2018) (nonprecedential). It upheld in part, reversed in part and remanded a lower court decision that a body temperature
detector calculating core temperature by applying an algorithm to temporal artery readings from swiping across the forehead was not eligible. While
it applied laws of nature, the Court found the combination to meet the “significantly more” needed to be patentable. Importantly, the Court observed
the steps were known but never combined in this matter, adding, “Something is not well-understood, routine and conventional merely because it is disclosed
in a prior art reference.”&nbsp;<em>Id</em>. at 10. It confirmed its earlier holding in <em>Bascom</em> that a method of filtering internet content
was not conventional or generic.&nbsp;<em>Bascom Glob. Internet Srvs.</em>, 827 F. 3d , 1341, 1350 (Fed Cir. 2016). The Court there found unconventional
applications of known concepts overcame a finding of subject matter ineligibility.
<br />
</p>
<p>Further changes are ahead in how patent examiners analyze eligible subject matter issues as revealed by the US Patent Office Director Iancu in September
address. He says the Office is working on revised patent eligibility guidelines and his comments reflect he aims to keep subject matter analysis separate
from obviousness. Recognizing that there is a need for more predictability, he says the guidelines will list exceptions to patentability and if the
claims do not fall within that list, the section 101 analysis ends. His basic concerns are abstract ideas, such as mathematical concepts; methods of
organizing human interaction; pure mental processes (such as an observation) and pure discoveries of nature (such as gravity, etc.).</p>
<p>If the claims fall within the exceptions, claims are reviewed to determine if in addition to the exempted matter, claims are directed to “significantly
more” and refers to the Berkheimer memo.</p>
<p>This critical 2018 memo from the Office represented a change in what examiners can rely upon when finding that the “significantly more” standard is not
met. Previously, an examiner could rely upon his or her own expertise in the art to find the significantly more addition is routine and conventional
and fails step 2b. Instead, the Office said evidence may be required from the examiner to support the conclusion and that evidence is limited to: 1)
a statement in the application specification or made during prosecution; 2) a court decision; 3) a publication; or 4) by the examiner taking “official
notice” of a fact. However, the memo continues, simply finding elements in a single patent or publication is insufficient absent demonstration that
such elements are widely prevalent or in common use in the field. Further, if the examiner is challenged on taking official notice, the examiner must
present evidence.</p>
<p>New case law, Patent Office memos and promises of new guidelines hold hope that predictability may return to section 101 analysis. Indeed, in the Berkheimer
memo, the Office made note that, “The USPTO recognizes that unless careful consideration is given to the particular contours of subject matter eligibility&hellip;it
could ‘swallow all of patent law.’” By putting the burden on the examiner to demonstrate a significant addition has not been made, the Patent Office
returns to the roots of patent law, that “anything under the sun” made by the hand of man is patentable.</p>
<p>&nbsp;</p>
<p><em><strong><a title="Pat A. Sweeney" href="https://www.ipmvs.com/attorneys/patricia-a-sweeney" target="_blank">Patricia A. Sweeney</a></strong> is an Intellectual Property Attorney in the <strong><a title="Biotechnology Patents page" href="https://www.ipmvs.com/services/biotechnology-patents" target="_blank">Biotechnology &amp; Chemical Patent Practice Group</a></strong> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <strong><a title="MVS Website" href="https://www.ipmvs.com/" target="_blank">the MVS website</a></strong> or contact Pat directly via email at <strong><a title="email Pat Sweeney" href="mailto:patricia.sweeney@ipmvs.com" target="_blank">patricia.sweeney@ipmvs.com</a></strong>.</em>
<br /> </p>
<p>&nbsp;</p>
<br />
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17157292&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252flight-at-the-end-of-the-tunnel-expanding-concepts-of-what-is-patentable-subject-matterhttp://www.ipmvs.com/filewrapper/light-at-the-end-of-the-tunnel-expanding-concepts-of-what-is-patentable-subject-matterWed, 26 Dec 2018 06:00:00 GMTThe Rollercoaster Ride of Gene Therapy<h3 class="hidden">Post By Oliver Couture</h3>
<p>Gene therapy has had several ups and downs since the idea of editing genes for therapy was first published in 1972. While there have been several instances
of successful attempts of treatment in humans, there have also been cases failures which have, at times, temporarily halted clinical studies.</p>
<p>One of the main issues with gene therapy has been the targeting of the molecular machinery to where it is needed and to avoid places it is not. The off-targeting
of gene therapy is perhaps the biggest issue that needs to be addressed as it directly relates to patient safety. In the past few years, this issue
has been addressed using various nuclease systems, such as Zinc Fingers, TALENS, and CRISPR. These systems have improved not only targeting, but also
the efficiency of making changes to chromosomes.</p>
<p>However, these systems also have their drawbacks. For example, the most commonly used CRISPR system can only target about 10% of the genome. It has also
been disclosed this year that, contrary to initial studies, CRISPR may have more off-targeting than originally thought. Additionally, a lab in Germany
recently has shown that the immune system of most of the healthy volunteers for the study could produce antibodies against the CRISPR nuclease when
it was injected. This immunity is likely to run across most forms of the CRISPR nuclease and across multiple species as the nuclease is highly conserved.
These studies have shown that the current system has a number of limitations.</p>
<p>These limitations highlight the need of continual innovation in this area. Researchers have already shown some improvements to the nuclease itself. This
year a lab at MIT used computation prediction to look for CRISPR nucleases that might be less site restrictive than the most commonly used one. By
testing their predictions, they were able to find a nuclease which targets up to half of the genome, five times what the commonly used nuclease can
target.</p>
<p>This shows that future innovations may create synthetic nucleases that could target anywhere in the genome by changing how the nuclease interacts with
nucleic acid. Additionally, further innovation is needed to decrease the off-targeting of these systems and to hide them from the host’s immune system
to improve their safety and efficacy for patients.</p>
<p><i><b><a href="https://www.ipmvs.com/attorneys/oliver-p-couture-ph-d" target="_blank" title="Oliver P. Couture, Ph.D.">Oliver P. Couture</a></b> is an Intellectual Property Attorney in the <b><a href="https://www.ipmvs.com/services/biotechnology-patents" target="_blank" title="Biotechnology Patents page">Biotechnology &amp; Chemical Patent Practice Group</a></b> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit<a href="https://www.ipmvs.com/"> <b>the MVS website</b></a> or contact Oliver directly via email at<a href="mailto:oliver.couture@ipmvs.com"> <b>oliver.couture@ipmvs.com</b></a>.</i>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17081333&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fthe-rollercoaster-ride-of-gene-therapyhttp://www.ipmvs.com/filewrapper/the-rollercoaster-ride-of-gene-therapyFri, 21 Dec 2018 06:00:00 GMT2018 Farm Act has important IP Implications<h3 class="hidden">Post By Heidi S. Nebel</h3>
<p>At long last, the 2018 Farm bill has been approved by Congress and forwarded to the President for signature. As I blogged earlier, the bill has important
Intellectual Property Implications. The first is that it adds PVP protection for asexually reproduced plants. The&nbsp; addition will allow asexually
reproduced plants, which are now protectable under the US Plant Patent statute 35 U.S.C. Section 161, (which includes a single claim to the variety
as shown and described in the application) to now include coverage for "essentially derived" varieties. While this type of coverage is potentially&nbsp;
available in the more lengthy to prosecute and more expensive utility patent regime, breeders of ornamentals and other typically asexually reproduced
varieties now have more options for protecting the "fruits" of their labor.</p>
<p>Per my work on the National PVP Advisory Board, the USDA has been anticipating this addition and indicates that the current staffing is adequate to support
these additional filings. It should not be long before the process is up and running at the USDA.</p>
<p>The Act also legalizes Cannabis (hemp), which has 0.3% or less of THC. This also has important IP implications, allowing hemp varieties to be PVP'd and
also paving the way for deposit of hemp seeds at the ATCC to enable United States Utility Patent application to hemp varieties. Previously, deposit
of seed to enable a patent appclaition on a variety had to be made in other Budapest treaty member depositories.&nbsp;</p>
<p><em><a href="https://www.ipmvs.com/attorneys/heidi-s-nebel" target="_blank">Heidi S. Nebel</a> is the Managing Member and Chair of the<a href="https://www.ipmvs.com/services/biotechnology-patents" target="_blank"> Biotechnology &amp; Chemical Patent Practice Group</a>. She has been assisting clients with intellectual property matters for over 25 years. For more information, please visit our <a href="https://www.ipmvs.com/" target="_blank">MVS website</a> or call our office at (515) 288-3667.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=17053090&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252f2018-farm-act-has-important-ip-implicationshttp://www.ipmvs.com/filewrapper/2018-farm-act-has-important-ip-implicationsFri, 14 Dec 2018 06:00:00 GMTRapper Sues the Makers of Fortnite Claiming Copyright Infringement of Dance Moves<h3 class="hidden">Post By Brandon Clark</h3>
<p>Rapper 2 Milly has filed a copyright and right of publicity lawsuit against the makers of the <em>Fortnite&nbsp;</em>video game claiming that they are
illegally using a dance move that he created in their wildly popular video game.</p>
<p>The Brooklyn-based rapper, whose real name is Terrence Ferguson, alleges that <em>Fortnite</em>-maker Epic Games is misappropriating his dance moves without
permission, compensation, or credit. The dance move at the center of the controversy was featured in 2 Milly’s 2014 music video for “Milly Rock”. The
video for the song garnered widespread attention, and many other celebrities including Rihanna, Chris Brown, and Wiz Khalifa posted videos on social
media of themselves performing the dance.&nbsp;</p>
<p>The complaint alleges that Epic Games has included the dance move, titled “Swipe It” in the highly popular game, along with many other famous dance moves.
<iframe width="560" height="315" src="https://www.youtube.com/embed/wIUCWPbjwQ4" frameborder="0" allow="accelerometer; autoplay; encrypted-media; gyroscope; picture-in-picture" allowfullscreen></iframe></p>
<p>Copyright law allows for the protection of choreography, so long as the work is fixed in a tangible medium of expression from which the work can be performed.
The U.S. Copyright Office has&nbsp;<a href="https://www.copyright.gov/circs/circ52.pdf">provided guidance</a> on the issue stating:</p>
<p>“The drafters of the copyright law also made clear that choreographic works do not include social dance steps and simple routines. Registrable choreographic
works are typically intended to be executed by skilled performers before an audience. By contrast, uncopyrightable social dances are generally intended
to be performed by members of the public for the enjoyment of the dancers themselves. Social dances, simple routines, and other uncopyrightable movements
cannot be registered as separate and distinct works of authorship, even if they contain a substantial amount of creative expression.”</p>
<p>2 Milly is seeking an injunction and monetary damages. While this may or may not lead to an interesting test to the limits of copyright protection, it’s
a very clear example of changing uses and new media leading to novel copyright law issues.</p>
<p><em><a href="https://www.ipmvs.com/attorneys/brandon-w-clark"><strong>Brandon W. Clark</strong></a> is the Chair of the Copyright, Entertainment &amp; Media Law Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit&nbsp;<u><a href="http://www.ipmvs.com/"><strong>www.ipmvs.com</strong></a></u>&nbsp;or contact Brandon directly via email at <u><strong><a href="mailto:brandon.clark@ipmvs.com" target="_blank" title="brandon.clark@ipmvs.com">brandon.clark@ipmvs.com</a></strong></u>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16939110&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252frapper-sues-the-makers-of-fortnite-claiming-copyright-infringement-of-dance-moveshttp://www.ipmvs.com/filewrapper/rapper-sues-the-makers-of-fortnite-claiming-copyright-infringement-of-dance-movesFri, 07 Dec 2018 06:00:00 GMTThe European Patent Office Board holds a rule can no longer be used to Reject Plant and Animal Breeding Inventions<h3 class="hidden">Post By Patricia Sweeney</h3>
<p>The European Technical board of Appeal during an oral hearing December 5<sup>th</sup> decided a rule that had been used to reject plant and animal breeding
claims is in conflict with a European Patent Convention (EPC) Article, with the result of reversing the impact of the rule in preventing patenting
of such claims. With&nbsp;this decision, it is now possible to patent a product of the biological process of breeding.</p>
<p>In Europe, essentially biological processes for the production of plants or animals are not eligible for patenting under Article 53(b) of the EPC. However,
in a 2015 decision of the EPO Enlarged Board of Appeals, referred to as the “Broccoli and tomatoes II” decision, it was held that Article 53(b) provides
products of plant breeding<em> can</em> be patented, and should not be excluded just because the process of producing the plants is ineligible for
patenting. The plants must meet other conditions of patenting, such as novelty and inventive step (not obvious), but the fact they were produced by
traditional breeding does not negate patentability. Plants produced by biotechnology methods had already been determined patentable under the Article.</p>
<p>After this decision, groups unhappy with the outcome lobbied for a change in the rules, resulting in Rule 28(2) of the EPC by the European Patent Office
Administrative Council. The rule stated European patents will not be granted to plants or animals exclusively obtained by means of an essentially biological
process – traditional plant breeding. This Board decision holds that rule can no longer be effective to reject patents.</p>
<p>It is expected that the same groups unhappy with the first decision will take action again to reverse course. In the meantime, this decision is a positive
outcome for those looking to patent plants and animals that result from traditional breeding practices.</p>
<p>
<p><em><strong><a title="Pat A. Sweeney" href="https://www.ipmvs.com/attorneys/patricia-a-sweeney" target="_blank">Patricia Sweeney</a></strong> is an Intellectual Property Attorney in the Biotechnology &amp; Chemical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <strong><a href="https://www.ipmvs.com/">www.ipmvs.co</a></strong><strong><a href="https://www.ipmvs.com/">m</a></strong> or contact Pat directly via email at <strong><a href="mailto:patricia.sweeney@ipmvs.com">patricia.sweeney</a></strong></em><strong><em><em><a href="mailto:patricia.sweeney@ipmvs.com">@ipmvs.com</a></em></em></strong><em>. </em> </p>
<p>&nbsp;</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16938971&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fthe-european-patent-office-board-holds-a-rule-can-no-longer-be-used-to-reject-plant-and-animal-breedhttp://www.ipmvs.com/filewrapper/the-european-patent-office-board-holds-a-rule-can-no-longer-be-used-to-reject-plant-and-animal-breedThu, 06 Dec 2018 06:00:00 GMTPalm Restaurant Dispute Leads to Big Monetary Damages<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p>A lawsuit filed in New York State court in 2012 on behalf of minority shareholders of the famous Palm Restaurant has a recent court decision awarding over
$71 million to the plaintiffs against defendants for breach of fiduciary duty. This dispute among family members is premised upon 54 undervalued intellectual
property licenses and a reasonable royalty for use of the trademarks and trade dress. </p>
<p> The Palm Restaurant was founded in New York City in 1921 by the grandfathers of the plaintiffs and defendants. This steakhouse was famous for its caricatures
on walls, contributed by cartoonists who often exchanged their cartoons for meals. The restaurant was incorporated in 1933. The defendants became managers
and majority shareholders of the restaurant corporation. A 1970 report by the corporation’s tax accountants stated that the restaurant was grossly
mismanaged and was a textbook example of how not to manage a restaurant.</p>
<p> Beginning in 1972, the defendants licensed the Palm intellectual property, including the name, the menu design, artistic caricatures, and other elements,
for $6,000 per year to new restaurants owned by the defendants. With the great success of the restaurants, the defendants were warned by their trademark
attorney in 1982 that the license fee would soon be undervalued. Despite this warning, the fee never changed. </p>
<p> The court accepted the plaintiff’s expert damage witnesses’ conclusions of a reasonable royalty of 5% of gross sales and rejected the defendant’s damage
experts’ testimony. The court concluded that the undervalued license agreements were self-dealing for the defendants, and an example of textbook fiduciary
misconduct. The royalty damages were over $68 million. Additional damages for other breaches of fiduciary duty were also awarded, along with interest
and attorney fees, which will increase the total judgement to over $100 million. </p>
<p> It is noted that one of plaintiff’s lead trial attorney, Josh Rievman, sits on the Advisory Board of <b><a href="https://www.leguslaw.com/" target="_blank" title="LEGUS">LEGUS</a></b>,
an intellectual network of law firms, along with <b><a href="https://www.ipmvs.com/attorneys/kirk-m-hartung" title="Kirk M. Hartung">Kirk Hartung</a></b> of MVS, who is chair of the Advisory Board. </p>
<p>
<p><em><p><strong><a href="https://www.ipmvs.com/attorneys/kirk-m-hartung" target="_blank" title="Kirk M. Hartung">Kirk Hartung</a></strong><em>&nbsp;is Chair of the <strong><a href="https://www.ipmvs.com/services/mechanical-patents">Mechanical Patent Practice Group</a></strong> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit<strong><a href="http://www.ipmvs.com/"> www.ipmvs.com</a></strong> or contact Kirk directly via email at <strong><a href="mailto:kirk.hartung@ipmvs.com">kirk.hartung@ipmvs.com</a></strong>.</em>
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</p>
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</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16753480&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fpalm-restaurant-dispute-leads-to-big-monetary-damageshttp://www.ipmvs.com/filewrapper/palm-restaurant-dispute-leads-to-big-monetary-damagesTue, 27 Nov 2018 06:00:00 GMTCoffee by Drone Delivery<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p>The use of drones in various business applications is becoming common. For example, drones with cameras are used to inspect farm crops, to search natural
disaster areas, to provide news coverage,&nbsp; and to make Hollywood films.&nbsp; Historical business are being reinvented and new businesses are
being developed by the use of these unmanned aerial vehicles.</p>
<p>Drones will soon be part of our daily lives. Many have read about plans for drone delivery services, such as Amazon’s plans to drop packages to your doorstep.&nbsp;
But have your heard of IBM’s invention of a drone which will deliver your morning coffee based upon your individual state of mind?&nbsp;</p>
<p>U.S. patent 10,040,551 issued on August 7, 2018 and is entitled DRONE DEVLIERY OF COFFEE BASED ON A COGNITIVE STATE OF AN INDIVIDUAL. This patent covers
a method of delivery a drink to an individual by connecting the drink to the drone, flying the drone to an area where a group of people are gathered,
scanning the people using a sensor on the drone to identify someone who has a predetermined sleepy cognitive state of mind, analyzing sleep data, and
delivering the drink to the sleepy person.
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</p>
<p>Whether you pour your own coffee, get it at a drive through window, have it brought to your table at a restaurant, or let a drone bring it to you, your
day dreams of the future and creative innovations might be here sooner than you think.</p>
<p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/kirk-m-hartung">Kirk M. Hartung</a></strong> is Chair of the <strong><a href="https://www.ipmvs.com/services/mechanical-patents">Mechanical Patent Practice Group</a></strong> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit<strong><a href="http://www.ipmvs.com/"> www.ipmvs.com</a></strong> or contact Kirk directly via email at <strong><a href="mailto:kirk.hartung@ipmvs.com">kirk.hartung@ipmvs.com</a></strong>.</em>
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</p>
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<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16664791&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fcoffee-by-drone-deliveryhttp://www.ipmvs.com/filewrapper/coffee-by-drone-deliveryThu, 15 Nov 2018 06:00:00 GMTAutel Robotics Co. Escalates Dispute with Largest Manufacturer of Hobbyist and Commercial Drones, SZ DJI Technology Co. (of China)<h3 class="hidden">Post By Gregory "Lars" Gunnerson</h3>
<p>SZ DJI Technology Co. could lose access to the U.S. market in a patent-infringement lawsuit with Autel Robotics Co. where Autel asserts SZ DJI infringes
U.S. Patent Nos.<a href="https://patents.google.com/patent/US7979714B2/">7,979,174</a> and <a href="https://patents.google.com/patent/US9260184B2/">9,260,184</a>,
which cover rotor attachment and speed changes, and SZ DJI asserts Autel infringes at least U.S. Patent Nos.<a href="https://patents.google.com/patent/US9016617B2/">9,016,617</a>;
<a href="https://patents.google.com/patent/US9284049B1/">9,284,049</a>; <a href="https://www.law360.com/articles/1042181https:/patents.google.com/patent/US9321530B2/">9,321,530</a>;
<a href="https://patents.google.com/patent/USD691514S1/">D691,514</a>;<a href="https://patents.google.com/patent/US9284040B2/">9,284,040</a> and
<a href="https://patents.google.com/patent/US9592744B2/">9,592,744</a>, which cover things like drone design, rotors, batteries and the location of a magnetometer for drones. Autel recently escalated the
situation by filing a complaint with the U.S. International Trade Commission, a U.S. trade agency dedicated to preventing unfair trade practices,
such as subsidies, dumping, patent, trademark, and copyright infringement.</p>
<p>The International Trade Commission is able to more quickly issue an import ban if it find products infringe U.S. patents than a U.S. District Court, provided
the patent infringement lawsuit is not on a "fast track," or some sort of special expedited review.</p>
<p>In this case, if the U.S. trade agency agrees to launch an investigation it could take the agency approximately 5 to 18 months to issue a final decision.
If it issues an import ban, the agency could still allow sales to continue for public interests like agricultural needs, but hobbyists dedicated to
SZ DJI products are most likely out of luck.</p>
<p><em><b><a href="https://www.ipmvs.com/attorneys/gregory-lars-gunnerson" target="_blank" title="Gregory Lars Gunnerson">Gregory “Lars” Gunnerson</a></b> is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <strong><a href="http://www.ipmvs.com/">www.ipmvs.com</a></strong> or contact Lars directly via email at <strong><a href="mailto:gregory.gunnerson@ipmvs.com">gregory.gunnerson@ipmvs.com</a></strong>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16664361&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fautel-robotics-co-escalates-dispute-with-largest-manufacturer-of-hobbyist-and-commercial-drones-sz-dhttp://www.ipmvs.com/filewrapper/autel-robotics-co-escalates-dispute-with-largest-manufacturer-of-hobbyist-and-commercial-drones-sz-dWed, 14 Nov 2018 06:00:00 GMTPTAB Makes Broadest Interpretation on Estoppel in IPRs<h3 class="hidden">Post By Oliver Couture</h3>
<p>Drafting post grant proceeding petitions needs to be done carefully due to their limited space. Last week, the Patent Trial and Appeal Board (PTAB) further
increased the pressure to use the limited number of words effectively when <em>Kingston Technology Company, Inc. v. Spex Technologies, Inc.</em> (Case
IPR2018-01002) was entered. Kingston, the petitioner, attempted to file a second IPR based on different grounds for the same claims as a first IPR
before the final written decision. During the IPR, the PTAB ordered briefings on why Kingston should not be estopped from bringing the second IPR.</p>
<p>Kingston argued that estoppel did not apply because under PTAB rules, they could not bring the new grounds for the first time during the prior IPR because
the IPR had already been instituted, citing <em>Shaw </em>for support. However, this did not persuade the PTAB. First, the PTAB held that <em>Shaw</em> was inapposite in this instance due to being prior to <em>SAS</em>, which changed how the PTAB handled multiple grounds in a single IPR. The PTAB held
that post-SAS IPRs had every ground for every claim&nbsp; either instituted or denied, whereas <em>Shaw</em> was a case dealing with only a particular
ground being denied in a prior IPR.</p>
<p>Second, the PTAB was not convinced because finding in favor of Kingston would render the phrase “or reasonably could have raised” in 315(e) meaningless.
The PTAB found that Kingston’s argument was that estoppel only applied to grounds raised in prior IPRs and not on any reasonable ground a petitioner
could have raised. The PTAB found this interpretation of current PTO policy in direct conflict with the broad definition found in the legislative history
of the AIA and the plain meaning of 315(e).</p>
<p>This IPR combined with <em>SAS</em> may make the 14,000 words of an IPR even more precious as now petitioners may not have enough room to put forth every
ground possible. However, this may be exactly what the PTAB intends and it may be better to only go forward with your best argument.</p>
<p>
<p><em><em><strong><a href="https://www.ipmvs.com/attorneys/oliver-p-couture-ph-d" target="_blank" title="Oliver P. Couture, Ph.D.">Oliver P. Couture</a></strong> is an Intellectual Property Attorney in the <strong><a href="https://www.ipmvs.com/services/biotechnology-patents">Biotechnology &amp; Chemical Patent Practice Group</a></strong> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <strong><a href="https://www.ipmvs.com/">www.ipmvs.co</a></strong><strong><a href="https://www.filewrapper.com/filewrapper/www.ipmvs.com">m</a></strong> or contact Oliver directly via email at <strong><a href="mailto:oliver.couture@ipmvs.com">oliver.couture</a></strong></em><strong><em><em><a href="mailto:oliver.couture@ipmvs.com">@ipmvs.com</a></em></em></strong><em>.</em> </em>
</p>
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<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16663577&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fptab-makes-broadest-interpretation-on-estoppel-in-iprshttp://www.ipmvs.com/filewrapper/ptab-makes-broadest-interpretation-on-estoppel-in-iprsMon, 12 Nov 2018 06:00:00 GMTToe Caps, Stripes, and Bumpers: Federal Circuit Revives Converse Sneaker Dispute<h3 class="hidden">Post By Nicholas Krob</h3>
<p>While Christian Louboutin has shown that <b><a href="https://www.filewrapper.com/filewrapper/bloody-shoes-christian-louboutin-wins-battle-over-non-traditional-trademark?filewrapper=true" target="_blank" title="Bloody Shoes blog post ">trademark rights may extend to colors used on a shoe</a></b>,
can the design of a shoe itself also be protected? As the Federal Circuit made clear last week, the answer is yes.</p>
<p>For years, sneaker giant Converse, Inc. has sought to protect its brand by claiming trademark rights in its famous Chuck Taylor sneaker. To this end, Converse
filed a federal trademark application on the sneaker’s design in 2012, which issued the following year as U.S. Trademark Reg. No. 4,398,753, that covers
“the design of the two stripes on the mid-sole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds
and line patterns, and the relative position of these elements to each other”. Shortly thereafter, the company filed 22 separate trademark infringement,
dilution, and unfair competition lawsuits against various brands selling shoes alleged to infringe upon the Chuck Taylor’s protected design. One such
lawsuit was filed with the International Trade Commission against brands such as Sketchers and New Balance.</p>
<p>In 2016, the ITC ruled that Converse did not have trademark rights in its Chuck Taylor sneaker design despite its federal registration. The basis for this
determination was that the mark had not acquired “secondary meaning”.</p>
<p>Under U.S. law, secondary meaning is required to show a mark is distinctive of a product’s source when the mark, as here, constitutes the design of the
product. Secondary meaning occurs when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather
than the product itself.</p>
<p>Last Tuesday, the Federal Circuit vacated the ITC’s ruling, stating that, among other errors, the ITC had erred in applying the wrong standard with regards
to its invalidity determination. Notably, the Federal Circuit explained that the length, degree, and exclusivity of use of a mark are “substantially
interrelated” and, unlike the ITC’s analysis, “should be evaluated together” when determining whether a mark has acquired secondary meaning. Based
on such errors, the Federal Circuit remanded the case back to the ITC.</p>
<p>With the Federal Circuit’s ruling, it is clear that, upon meeting the requisite thresholds, something as broad as the design of a $50 shoe can be protected
under U.S. trademark laws. Whether Converse will receive such protection for its Chuck Taylors, however, remains to be seen.</p>
<p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/nicholas-j-krob" target="_blank" title="Nicholas J. Krob">Nicholas Krob</a></strong> is an Intellectual Property Attorney at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <strong><a href="https://www.ipmvs.com/">www.ipmvs.co</a></strong><strong><a href="https://www.ipmvs.com/">m</a></strong> or contact Nick directly via email at </em><strong><em><a href="mailto:nicholas.krob@ipmvs.com"><em>nicholas.krob@ipmvs.com</em></a></em></strong><em>.</em> </p>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16662012&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252ftoe-caps-stripes-and-bumpers-federal-circuit-revives-converse-sneaker-disputehttp://www.ipmvs.com/filewrapper/toe-caps-stripes-and-bumpers-federal-circuit-revives-converse-sneaker-disputeWed, 07 Nov 2018 06:00:00 GMTIt's Better to Show that Claims Belong to an Unpredictable Art<h3 class="hidden">Post By Xiaohong Liu</h3>
<p>A non-precedential opinion does not establish a new law, but usually offers good patent application drafting and prosecution tips. BASF CORPORATION v.
ENTHONE, INC., came out from the Court of Appeal of the Federal Circuit (CAFC) last Friday, and reminded me of a good tip: include evidence in the
record to show that the claims relate to an unpredictable art.</p>
<p>In this case, BASF challenged the Patent Trial and Appeal Board’s (PTAB) inter partes review decision that a claim in a patent by Enthone was not obvious
over a combination of two references. The disputed claim relates to an electrolytic plating composition comprising a source of [copper] ions and a
polyether suppressor compound comprising a combination of propylene oxide (PO) repeat units and ethylene oxide (EO) repeat units.&nbsp;</p>
<p>BASF argued before the PTAB that the claim is obvious because a first reference teaches an electrolytic plating composition including a suppressor compound
and a second reference teaches that the polyether may be used as “suppressor agents for plating compositions”. However, the PTAB found that the second
reference did not provide the requisite motivation to combine, because “there must be some specific motivation to employ specific plating bath components,
given the general unpredictability in the field and the art”.</p>
<p>BASF argued on appeal that the PTAB erred by applying an overly “stringent version” of the motivation to combine test. CAFC held that the PTAB did not
apply an incorrect legal standard in its motivation to combine analysis, because “this approach fits within the Supreme Court’s directive to “account
[for] the inferences and creative steps that a [PHOSITA] would employ”, KSR, 550 U.S. at 418, "by considering whether, based on the record, the level
of unpredictability in the art would affect such inferences and creative steps, such that a PHOSITA might require a more explicit directive”.</p>
<p>It is very common for a claim in any patent application to be a combination of two or more elements that already exist in the prior art, leading to one
or more obviousness rejections for the claim over a combination of two or more cited references. To enhance the chances to overcome the obviousness
rejection(s) for such claims, it is always good practice to include some evidence in the patent application or to point out the same in the cited references
to show that the claims relate to an unpredictable art.</p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/xiaohong-liu-ph-d" target="_blank" title="Xiaohong Liu, Ph.D.">Xiaohong Liu, Ph.D.,</a></strong> is an Intellectual Property Attorney in the Biotechnology &amp; Chemical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit <a href="http://www.ipmvs.com/"><strong>www.ipmvs.co</strong><strong>m</strong></a> or contact Xiaohong directly via email at </em><strong><em><a href="mailto:xiaohong.liu@ipmvs.com"><em>xiaohong.liu@ipmvs.com</em></a></em></strong><em>.</em> </p>
<p>&nbsp;</p>
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<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16656601&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fbetter-to-show-that-clams-belong-to-an-unpredictable-arthttp://www.ipmvs.com/filewrapper/better-to-show-that-clams-belong-to-an-unpredictable-artSun, 28 Oct 2018 05:00:00 GMTProtecting Your Nanotechnology Inventions - Part 3: Enabling Your Invention<h3 class="hidden">Post By Jonathan L. Kennedy</h3>
<p>In granting patent rights, i.e., the right to exclude others from making, using, selling, and importing, the government requires that the inventors educate
the public as to their invention by adequately describing it and enabling it. Enablement is a question of whether the application contains sufficient
information so as to enable one skilled in the art to make and use the claimed invention. Lack of enablement can be grounds for both rejecting a patent
claim and invalidating an issued patent. Thus, it is important to ensure that your invention is properly enabled.</p>
<p>Some simple things that can assist with enablement include keeping proper lab notebook records, identifying standardized procedures used to make and test
the invention, and describing any other procedures and methods used not set forth in standardized procedures. Keeping records of ingredients, sources
for ingredients, and lab equipment specifications can also be a great benefit when it is time to prepare your patent application.</p>
<p>While not all of this information may require disclosure, keeping proper records will ensure you have the necessary information to enable your invention
when preparing and filing your patent application.</p>
<p>This is the third post in a multipart series. The first two posts can be accessed at the following links: “<a href="https://www.filewrapper.com/filewrapper/protecting-your-nanotechnology-inventions-part-1-defining-your-space?filewrapper=true">Protecting Your Nanotechnology Inventions – Part 1: Defining Your Space</a>”
and “<a href="https://www.filewrapper.com/filewrapper/protecting-your-nanotechnology-inventions-part-2-defining-your-invention">Protecting Your Nanotechnology Inventions – Part 2: Defining Your Invention</a>.”</p>
<p>&nbsp;</p>
<p><strong><em><a href="https://www.ipmvs.com/attorneys/jonathan-l-kennedy" target="_blank" title="Jonathan L. Kennedy">Jonathan L. Kennedy</a></em></strong><em>,</em><em> is a Patent Attorney in the </em><strong><em><a href="https://www.ipmvs.com/services/biotechnology-patents">Biotechnology &amp; Chemical Practice Group</a></em></strong><em> at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit</em><strong><em><a href="http://www.ipmvs.com/"> www.ipmvs.com </a></em></strong><em>or contact Jonathan directly via email at </em><strong><em><a href="mailto:jonathan.kennedy@ipmvs.com">jonathan.kennedy@ipmvs.com</a></em></strong><em>.</em> </p>
<p>&nbsp;</p>
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<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16627023&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fprotecting-your-nanotechnology-inventions-part-3-enabling-your-inventionhttp://www.ipmvs.com/filewrapper/protecting-your-nanotechnology-inventions-part-3-enabling-your-inventionWed, 17 Oct 2018 05:00:00 GMTMusic Modernization Act Signed Into Law<h3 class="hidden">Post By Brandon Clark</h3>
<p>Earlier today, the Music Modernization Act (MMA) was signed into law. The MMA is a sweeping reform to music licensing and copyright related royalty payments
and marks the first significant copyright legislation passed in decades.</p>
<p>The House unanimously approved the bill in April followed by the Senate unanimously approving the legislation in September. The MMA then returned to the
House for approval of the Senate version, and as of today, has been signed into law. The legislation includes a number of components, including the
right for artists to receive royalties for pre-1972 recordings, as well as improved processing and payments to songwriters and music publishers for
works played on streaming services. Perhaps most significantly, the MMA creates a blanket mechanical license and centralized system to administer it,
while also changing some considerations used in setting music publishing standard royalty rates.</p>
<p>Specifically, the MMA contains three separate pieces of legislation:</p>
<p>– The&nbsp;Music Modernization Act&nbsp;of 2018, S.2334, introduced by Senators Orrin Hatch (R-UT) and Lamar Alexander (R-TN) in January, which updates
licensing and royalties as they pertain to streaming services.</p>
<p>– The CLASSICS Act (or Compensating Legacy Artists for their Songs, Service, &amp; Important Contributions to Society Act), introduced in February by Chris
Coons (D-DE) and John Kennedy (R-LA) to ensure that artists receive royalty payments on pre-1972 audio recordings.</p>
<p>– The AMP Act (or Allocation for Music Producers Act), introduced in March by Senate Judiciary Committee Chairman Chuck Grassley (R-IA) and ranking committee
member Dianne Feinstein (D-CA.) with the support of Senators Bob Corker (R-TN) and Kamala Harris (D-CA) which changes the way some music producers
will collect and receive royalties.</p>
<p>As mentioned above, the MMA marks the first significant copyright legislation passed in decades and comes as a result of bipartisan support and rare support
across differing sectors of the music industry. The legislation marks the first step in an ongoing struggle between copyright owners and copyright
users to adapt to an evolving digital landscape.</p>
<p><em><a title="Brandon W. Clark" href="https://www.ipmvs.com/attorneys/brandon-w-clark" target="_blank">Brandon W. Clark</a> is the Chair of the Copyright, Entertainment &amp; Media Law Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit <u><a href="http://www.ipmvs.com">www.ipmvs.com</a></u> or contact Brandon directly via email at</em>
<a href="mailto:brandon.clark@ipmvs.com"> </a><em><u><a href="mailto:brandon.clark@ipmvs.com">brandon.clark@ipmvs.com</a></u>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16613290&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fmusic-modernization-act-signed-into-lawhttp://www.ipmvs.com/filewrapper/music-modernization-act-signed-into-lawThu, 11 Oct 2018 05:00:00 GMTGround Control to Robot Tom: Will U.S. Aerospace Corporations Move Into Unmanned Aerial Systems Innovation?<h3 class="hidden">Post By Sarah Dickhut</h3>
<p>Earlier this month the House Committee on Transportation and Infrastructure’s Subcommittee on Aviation held a hearing regarding the emergence of new aerospace
technologies&mdash;particularly Unmanned Aerial Systems (UAS) and Unmanned Aerial Vehicles (UAV) &mdash; and how they can be incorporated into existing
airspace systems. As unmanned aerospace innovation grows, regulatory agencies correspondingly must consider how to coordinate and regulate the operations
of commercial airplanes together with unmanned vehicles (e.g. passenger drones and flying cars) which will presumably fly much closer to the ground
and operate out of locations other than airports regulated by the Federal Aviation Administration (FAA). The very occurrence of such a hearing is indicative
of a growing wave of innovation in the field of UAS and UAV.</p>
<p>In general, aerospace patent applications have increased by about 50% in the United States since 2006. However, this increase in aerospace filings does
not necessarily correspond to an increase in UAS and UAV innovation. The largest filer and owner of aerospace patents in the United States is Boeing.
Boeing’s more recent patent applications tend to focus on commercial airplane innovation. The patent applications range from useful to more bizarre.
In 2013, Boeing filed a patent application on a “transport vehicle upright sleep support system,” which is essentially a backpack which attaches to
a standard airplane seat and sits around the front of the passenger. The backpack has a cushion so a passenger may lean into the backpack and rest.<em>See</em> Pat. No. 8,985,693. This is of course a more humorous example; Boeing has and continues to steadily innovate in traditional areas of aerospace technology.</p>
<p>Boeing and other major U.S. aerospace corporations do not appear to be as focused on UAV development as other corporations and countries around the world.
Currently, China far outpaces other foreign jurisdictions as the preferred location for obtaining UAV patents. As of 2017, there were more than 14,000
Chinese UAV patents and pending applications. Part of these figures correspond to Chinese companies filing recreational UAV patents, such as toy drones.
However, as China establishes itself as a preferred country for protecting UAV technologies, and as Chinese corporations take a larger share of the
UAV/UAS markets, it is fair to wonder when and if U.S. corporations like Boeing will enter into this competitive market. Amazon, with its increasing
number of filings for drones and drone delivery systems, is certainly working to capture a large share of the market. It remains to be seen whether
other U.S. corporations will follow suit.</p>
<p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/sarah-m-dickhut" target="_blank" title="Sarah M. Dickhut">Sarah Dickhut</a></strong> is an Associate Attorney in the <b><a href="https://www.ipmvs.com/services/biotechnology-patents" target="_blank" title="Biotechnology Patents page">Biotechnology &amp; Chemical Patent Practice Group</a></b>&nbsp;at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <a href="http://www.ipmvs.com/" target="_blank" title="MVS Website"><strong>www.ipmvs.co</strong><strong>m</strong></a> or contact Sarah directly via email at </em><strong><em><a href="mailto:sarah.dickhut@ipmvs.com" target="_blank" title="email Sarah"><em>sarah.dickhut@ipmvs.com</em></a></em></strong><em>.</em> </p>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16605213&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fground-control-to-robot-tom-will-us-aerospace-corporations-move-into-unmanned-aerial-systems-innovathttp://www.ipmvs.com/filewrapper/ground-control-to-robot-tom-will-us-aerospace-corporations-move-into-unmanned-aerial-systems-innovatFri, 28 Sep 2018 05:00:00 GMTPatent Eligibility: Hope from the PTO Director<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p>On Monday, September 24th, the Director of the U.S. Patent &amp; Trademark Office, Andrei Iancu, stated in a speech to the Intellectual Property Owners
Association that his agency is working on new guidelines that address the “mushed up” and “muddled” case law on patent eligibility under 35 USC 101.
Once again, Iancu has acknowledged that the current status of eligibility is unclear and distorted and must end.
<br />
</p>
<p>According to Iancu, there are two problems with the current eligibility analysis: (1) there is no definition of “abstract ideas” which are patent-ineligible;
and (2) co-mingling of eligibility under section 101 with other patentability requirements, such as obviousness under section 103. He insists that
the standard for eligibility must be clear, so the patent system is predictable and transparent, and people know up front if an invention is eligible
for patent protection.</p>
<p>Iancu suggests that in addition to laws of nature and natural phenomena, which are fairly clear and relatively easy to understand, that “abstract ideas”
be more clearly defined. For example, he proposes three categories of ineligible ideas based on Supreme Court precedent: (1) mathematical formulas
and calculations; (2) methods of organizing human interactions, like fundamental economic practices and marketing/sales activities; and (3) mental
processes, such as evaluating and judging.&nbsp;</p>
<p>He notes that we have gotten ourselves “into a rut” on section 101, and we need simplification. While there are bills pending in Congress, he knows that
can take a long time&nbsp;with uncertain results. His concern is that the PTO cannot wait, because there are thousands of examiners “who struggle with
these issues on a daily basis.” Iancu concluded that examiners, patent applicants and owners, and the public need guidance now.</p>
<p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/kirk-m-hartung" target="_blank" title="Kirk M. Hartung">Kirk M. Hartung</a></strong> is Chair of the <strong><a href="https://www.ipmvs.com/services/mechanical-patents" target="_blank" title="Mechanical Patents">Mechanical Patent Practice Group</a></strong> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit<strong><a href="http://www.ipmvs.com/" target="_blank" title="MVS Website"> www.ipmvs.com</a></strong> or contact Kirk directly via email at <strong><a href="mailto:kirk.hartung@ipmvs.com" target="_blank" title="email Kirk Hartung">kirk.hartung@ipmvs.com</a></strong>.</em>
<br />
</p>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16603020&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fpatent-eligibility-hope-from-the-pto-directorhttp://www.ipmvs.com/filewrapper/patent-eligibility-hope-from-the-pto-directorTue, 25 Sep 2018 05:00:00 GMTCan Starbucks Stop a Competitor from Using the Term “JEW BUCKS” After In re Slants?<h3 class="hidden">Post By Christine Lebron-Dykeman</h3>
<p>In 2014, SwordPen Publishers LLC filed a trademark application for the mark JEW BUCKS SMART MONEY. RICH COFFEE. for use in connection with restaurant services
featuring coffee and espresso drinks. At that time the United States Patent and Trademark Office took it upon itself to stop the registration of this
mark under the now defunct “disparagement clause”. In an office action issued against the application, the PTO, relying on 15 U.S.C. §1052(a), refused
registration because the applied-for mark consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions,
beliefs, or national symbols.</p>
<p>However in June 2017, in the <em>In re Slants</em> case, the Supreme Court famously declared the disparagement clause unconstitutional as a violation of
the First Amendment insofar as the statute amounted to an impermissible viewpoint restriction (that is, it permitted registrability of a <em>positive</em> reference to a particular group, on the one hand, but denied registration of a <em>negative</em> reference to the same group).</p>
<p>Knowing that the application could no longer be refused as disparaging, SwordPen refiled for the very same mark on October 19, 2017. Interestingly, when
reviewing this new application, the PTO for the first time raised a likelihood of confusion objection over Starbucks' STARBUCKS registered trademarks,
but ultimately SwordPen overcame that objection and the mark was approved for registration. &nbsp;&nbsp;</p>
<p>Starbucks, however, isn’t willing to let this mark&mdash;that it contends is anti-Semitic&mdash;register without a fight. On September 12, 2018, Starbucks
Corp. filed an opposition against SwordPen’s application. Having no ability to rely on the now defunct disparagement clause, Starbucks is relying on
likelihood of confusion and dilution by tarnishment contending that the mark is "anti-Semitic”.&nbsp;</p>
<p>With respect to likelihood of confusion, Starbucks points out that SwordPen is using the words bucks and coffee and replicating the look and feel of Starbucks'
famous logo.</p>
<p>With respect to dilution by blurring, Starbucks argues "Applicant's mark carries strong negative connotations because the term 'Jew Bucks' has been used
pejoratively and derogatively to describe opposer and/or opposer's connection with people of the Jewish faith or ethnicity". The notice of opposition
included a number of screenshots showing the use of "Jew Bucks" on racist webpages, including an article entitled “Jew Bucks from Death –Starbucks
Kills Christian Children” and another talking about "Jewbucks" waging a "War on Christmas".</p>
<p>It will be interesting to watch how the Trademark Trial and Appeal Board resolves this dispute which in some ways requires the Board to weigh in on some
of the same questions that arose in the <em>In re Slants</em> case. The question arise: Can a competitor prevent registration of a disparaging trademark
under the auspices of dilution when it would otherwise be registrable? This is certainly a case to watch.</p>
<p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/christine-lebron-dykeman" target="_blank" title="Christine Lebron-Dykeman">Christine Lebron-Dykeman</a></strong> is Chair of the <b><a href="https://www.ipmvs.com/services/trademarks" target="_blank" title="trademarks">Trademark Practice Group</a></b> at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit<a href="http://www.ipmvs.com/" target="_blank" title="MVS Website"><strong> www.ipmvs.co</strong><strong>m</strong></a> or contact Christine directly via email at<strong><a href="mailto:christine.lebron-dykeman@ipmvs.com" target="_blank" title="email Christine"> christine.lebron-dykeman@ipmvs.com</a></strong>.</em>
<br />
</p>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16601471&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fcan-starbucks-stop-a-competitor-from-using-the-term-jew-bucks-after-in-re-slantshttp://www.ipmvs.com/filewrapper/can-starbucks-stop-a-competitor-from-using-the-term-jew-bucks-after-in-re-slantsMon, 24 Sep 2018 05:00:00 GMTPost Grant Review and Inter Partes Review At a Glance<h3 class="hidden">Post By Scott Johnson</h3>
<p>Patent Office reviews known as a Post Grant Review (PGR) or Inter Partes Review (IPR) of issued patents are constitutional,<em> Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC</em>,
138 S. Ct. 1365, 1370 (2018), likely to avoid some sovereign immunity challenge, <em>Saint Regis Mohawk Tribe v. Mylan Pharm. Inc.</em>, 896 F.3d 1322
(Fed. Cir. 2018), and must thoroughly address every claim under review,<em> SAS Inst., Inc. v. Iancu</em>, 138 S. Ct. 1348, 1352–53 (2018). In short,
they’re here to stay. Almost anyone can institute these proceedings, but only someone with an injury in fact can appeal to the Federal Circuit Court
of Appeals. <em>JTEKT Corp. v. GKN Auto. LTD.</em>, No. 2017-1828, 2018 WL 3673005, at *2 (Fed. Cir. Aug. 3, 2018). So how will they affect your patent
strategy? Each offers the benefit of a lower standard of review than a district court proceeding. Each can potentially save time and expedite a decision
versus a district court proceeding. Each is generally less expensive than a full-blown patent infringement action. And each could impact your business
strategy in different ways.&nbsp;</p>
<p>PGRs must be filed within nine months from the date a patent<a href="#_ftn1" name="_ftnref1">[1]</a> issues. This means that in order for any challenge
to be placed, you must be actively monitoring competitor owned patents or, preferably competitor owned patent applications. You must monitor these
patents or applications to know which ones have potential claim scope that may cause you concern. That concern can arise from a potential to cover
your existing products that came to market after the competitor’s invention or products you intend to bring to market.&nbsp;</p>
<p>If you find a patent or an application of concern, you must be prepared to evaluate the patent’s validity quickly to timely file a PGR. Thankfully, there
are several grounds on which you can challenge the patent. These include whether it meets the requirements of section 101 (usefulness and statutory
subject matter issues), section 112 (written description), section 102 (novelty or prior public use), or section 103 (obviousness). If instituted,
a PGR is typically decided within 12 months. This is often much shorter than the time to judgment in a litigation, but check your jurisdiction’s typical
litigation timeline.&nbsp; &nbsp;&nbsp;&nbsp;&nbsp;</p>
<p>If you do not challenge the patent within the first nine months, you can still challenge a patent through an inter partes review. An IPR is similar to
a PGR except your validity challenges are more limited. In an IPR, you can only challenge a patent based on section 102 (novelty) or 103 (obviousness)
grounds. Similar to a PGR, decisions are generally expedited, this time by statute. IPRs must be decided generally within 18 months (extendable to
24 for good cause). An IPR is strongly recommended if you are facing a patent threat to your business – i.e. you may be about to be sued and you have
a strong invalidity position based on prior art.</p>
<p>Both of these proceedings offer potential benefits to an accused infringer. If instituted, both have high success rates, but both also have potential consequences
if unsuccessful. Be sure to consider PGRs and IPRs as part of any patent strategy.</p>
<p><a href="#_ftnref1" name="_ftn1" style="font-size: 11px;">[1]</a><span style="font-size: 11px;"> PGRs can only be filed for patents with an effective filing date of March 16, 2013 or later.</span>
</p>
<p><span style="font-size: 11px;"></span>
</p>
<p><em><a href="https://www.ipmvs.com/attorneys/r-scott-johnson" target="_blank">Scott Johnson</a></em><em> is Chair of the <a href="https://www.ipmvs.com/services/litigation" target="_blank">Litigation practice group</a> and a member of the <a href="https://www.ipmvs.com/services/mechanical-patents" target="_blank">Mechanical practice group</a> at McKee, Voorhees &amp; Sease. Scott has been protecting his client's intellectual property rights at MVS for 20 years. </em>
</p>
<p>&nbsp;</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16598764&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fpost-grant-review-and-inter-partes-review-at-a-glancehttp://www.ipmvs.com/filewrapper/post-grant-review-and-inter-partes-review-at-a-glanceFri, 21 Sep 2018 05:00:00 GMTLeftover Pizza? Domino’s Reheats Pizza Hut’s Invalidity Claim Against Ameranth Inc.<h3 class="hidden">Post By Gregory "Lars" Gunnerson</h3>
<p>Ameranth Inc. asserts it is a leading provider of wireless and Internet based solutions for the hospitality/gaming markets and that it has a very strong
intellectual property portfolio including numerous strategic patents in technologies such as Wireless POS, Table Management, Reservations Management,
Mobile Concierge, Electronic Menus, Guest Surveys, Inventory Management, Health Care Services and Enrollment Assistance.</p>
<p>Ameranth Inc. was originally in a dispute with Pizza Hut over whether Pizza Hut Inc. infringed its&nbsp;<a href="https://patents.google.com/patent/US8146077B2/">‘077</a> patent. The ‘077 patent relates to dining sales, and more particularly, to an information management and synchronous communications system. Ameranth
eventually settled with Pizza Hut without ever reaching a decision on the merits of whether the ‘077 patent was, in fact, even valid.</p>
<p>Domino’s, fearing future litigation over the same patent, took initiative and asked to join and revive Pizza Hut’s motion for summary judgment asserting
invalidity of the ‘077 patent, saying it was essential to reach a conclusion on the merits for the sake of the remaining 30+ defendants who are now
named in the present, consolidated litigation. U.S. District Judge Dana Sabraw granted the motion even though the motion was untimely reasoning that
the issue of patentability was too critical not to be resolved.</p>
<p>The new hearing is set for this Friday, September 21, and could affect how numerous restaurants selling pizza online are able to conduct business moving
forward.</p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/gregory-lars-gunnerson" title="Gregory Lars Gunnerson">Gregory “Lars” Gunnerson</a></strong> is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit <b><a href="http://www.ipmvs.com/" title="MVS Website">www.ipmvs.com</a></b> or contact Lars directly via email at <strong><a href="mailto:gregory.gunnerson@ipmvs.com" target="_blank" title="email Lars">gregory.gunnerson@ipmvs.com</a></strong>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16596391&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fleftover-pizza-domino-s-reheats-pizza-hut-s-invalidity-claim-against-ameranth-inc-1http://www.ipmvs.com/filewrapper/leftover-pizza-domino-s-reheats-pizza-hut-s-invalidity-claim-against-ameranth-inc-1Tue, 18 Sep 2018 05:00:00 GMTCRISPR: Broad Institute Holds onto its Piece of Pie, and it’s Delicious!<h3 class="hidden">Post By Oliver Couture</h3>
<p>On Monday, September 10th, the Court of Appeals for the Federal Circuit (CAFC) upheld the decision from the Patent Trial and Appeal Board (PTAB) on the
interference between the Broad Institute and the University of California. The PTAB held, and the CAFC upheld, that given the difference between prokaryotic
and eukaryotic cells, one skilled in the art would not have had a reasonable expectation of success in CRISPR-Cas9 working in eukaryotic cells. With
this, the court continued that the UC claims did not render Broad’s claims obvious, so there was no interference-in-fact. The CAFC also pointed out
that they were only ruling on the appeal of the interference and not on the validity of either set of claims. Perhaps opening the door for further
challenges.</p>
<p>The CAFC holding means that Broad’s claims to using CRISPR for eukaryotic still remain valid and distinct from the UC claims, which are still pending.
Therefore, absent a Supreme Court grant of<em>certierorai</em>, it is likely Broad will retain the patents for CRISPR-Cas9 in eukaryotic cells while
UC will be able to claim prokaryotic cells. This should provide some certainty for individuals, universities, or companies looking to license CRISPR-Cas9.
Previously, it was unclear if an entity was conducting research in eukaryotic cells whether they should obtain a license from Broad, UC or both!</p>
<p>This licensing was especially critical for universities and other non-profit organizations as Broad, along with DuPont Pioneer, were allowing non-exclusive,
free licenses for the use of CRISPR-Cas9 for academic research. This agreement provides access to IP from the Broad and co-owned with collaborators,
such as MIT and the University of Iowa, among others. UC, and Caribou Bioscience, Inc. which was co-founded by Dr. Jennifer Doudna of UC Berkeley,
has not joined this patent pool and were not allowing non-exclusive, free licenses for their IP.</p>
<p>After this holding by the CAFC, UC may be encouraged to join the patent pool as the patents and applications held by Broad and others to eukaryotic cells
are arguably the more valuable of the two cell types. <a href="https://dlbjbjzgnk95t.cloudfront.net/1081000/1081832/17-1907.opinion.9-10-2018.pdf" target="_blank" title="entire decision">The entire decision can be round here.</a>
</p>
<p><em><em><strong><a href="https://www.filewrapper.com/attorneys/oliver-p-couture-ph-d" target="_blank" title="Oliver P. Couture, Ph.D.">Oliver P. Couture</a></strong> is an Intellectual Property Attorney in the <strong><a href="https://www.ipmvs.com/services/biotechnology-patents" target="_blank" title="Biotechnology Patents page">Biotechnology &amp; Chemical Patent Practice Group</a></strong> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <strong><a href="https://www.ipmvs.com/" target="_blank" title="MVS Website">www.ipmvs.co</a></strong><strong><a href="https://www.filewrapper.com/filewrapper/www.ipmvs.com">m</a></strong> or contact Oliver directly via email at <strong><a href="mailto:oliver.couture@ipmvs.com" target="_blank" title="email Oliver">oliver.couture</a></strong></em><strong><em><em><a href="mailto:oliver.couture@ipmvs.com" target="_blank" title="email Oliver">@ipmvs.com</a></em></em></strong><em>.</em> </em>
</p>
<p>&nbsp;</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16593015&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fcrispr-broad-institute-holds-onto-its-piece-of-pie-and-it-s-delicioushttp://www.ipmvs.com/filewrapper/crispr-broad-institute-holds-onto-its-piece-of-pie-and-it-s-deliciousThu, 13 Sep 2018 05:00:00 GMTSupreme Court to Decide Whether &quot;Secret Sales&quot; are Prior Art<h3 class="hidden">Post By Michael C. Gilchrist</h3>
<p>Prior art is any publication or activity that can be cited to find a claimed invention invalid as not new or as a merely obvious combination of existing
elements. Until recently, the law had been settled that any sale (within the United States) of a product that included claimed features of an invention
is prior art, even if the sale did not publicly disclose those claimed features. In other words, patentees were not allowed to extend their exclusive
period by making secret sales before filing a patent application. This had the positive effect of encouraging inventors to file patent applications
early, rather than withholding the details of their invention from the public. On the downside, it also meant that inventors could, unless they structured
the transaction properly, inadvertently create prior art by purchasing their own invention from a fabricator before making the invention public.</p>
<p>The old rule was based on a law that defined prior art as something that was “described in a printed publication in this or a foreign country or in public
use or on sale in this country”. In 2013, the statutory language was changed to read “described in a printed publication, or in public use, on sale,
or otherwise available to the public”. The addition of the phrase “or otherwise available to the public” could mean that that the listed categories
must make the invention “available to the public” to qualify as prior art. This would exclude secret sales from being prior art.</p>
<p>&nbsp;</p>
<p style="color: rgb(79, 129, 189);"><u>Old Language:</u> “described in a printed publication in this or a foreign country or in public use or on sale in this country”</p>
<p style="color: rgb(79, 129, 189);"><u>New Language:</u> “described in a printed publication or in public use, on sale, or otherwise available to the public”</p>
<p style="color: rgb(79, 129, 189);">&nbsp;</p>
<p>In the case of <a href="https://www.supremecourt.gov/docket/docketfiles/html/public/17-1229.html" target="_blank">Helsinn Healthcare v. Teva Pharmaceuticals USA</a> the Supreme Court agreed to answer the question whether secret sales qualify as prior art under the new law. In Helsinn, the patentee agreed to purchase
its own drug from a manufacturer before the drug was approved for sale to the public. The agreement was subject to a confidentiality agreement. The
Court of Appeals for the Federal Circuit found that the new language in the 2013 Act did not change the meaning of what qualified as being on sale
and held the patent invalid in light of the product being on sale before the critical date. Briefing at the Supreme Court will conclude this fall with
a decision likely sometime next spring.</p>
<p><em><a href="https://www.ipmvs.com/attorneys/michael-c-gilchrist" target="_blank" title="Michael C. Gilchrist">Michael C. Gilchrist</a> is a patent attorney in the <a href="https://www.ipmvs.com/services/mechanical-patents" target="_blank" title="Mechanical Patents">Mechanical</a> and <a href="https://www.ipmvs.com/services/litigation" target="_blank" title="Litigation">Litigation</a> practice groups. Mike has been an intellectual property attorney at McKee, Voorhees &amp; Sease for 10 years, serving clients’ intellectual property needs.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16592468&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fsupreme-court-to-decide-whether-quot-secret-sales-quot-are-prior-arthttp://www.ipmvs.com/filewrapper/supreme-court-to-decide-whether-quot-secret-sales-quot-are-prior-artWed, 12 Sep 2018 05:00:00 GMTBloody Shoes: Christian Louboutin Wins Battle Over Non-Traditional Trademark<h3 class="hidden">Post By Nicholas Krob</h3>
<p>“These expensive, these is red bottoms, these is bloody shoes.”</p>
<p>Does this line, from Cardi B’s breakout single “Bodak Yellow,” call to mind a particular fashion brand? If not, the following line from Lil Uzi Vert’s
“The Way Life Goes” might help you out:</p>
<p>“My Louboutins new, so my bottoms they is redder.”</p>
<p>For over 25 years, Christian Louboutin has been a staple in popular culture, famous for its red-bottomed high heels. But can this distinctive feature,
comprised merely of a single color applied to the bottom of footwear, be entitled to trademark protection? As the European Court of Justice recently
determined, the answer is yes.</p>
<p>Louboutin, which owns a Benelux trademark for “high-heeled shoes” comprised of “the coulour red (Pantone 18-1663TP) applied to the sole of a shoe,” sued
Dutch retail shoe outlet Van Haren, which was selling high-heeled shoes with red soles, in the District Court of The Hague. During proceedings, a question
arose whether Louboutin’s trademark was invalid under European trademark law, which excludes marks that “consist exclusively of the shape which gives
substantial value to the goods.” The District Court stayed proceedings and referred the matter to the ECJ for a preliminary ruling on whether the term
“shape” was limited to a good’s three-dimensional properties like contours or whether it extended to non-three-dimensional properties like color.</p>
<p>The ECJ determined the word “shape” should be interpreted according to its “usual meaning,” which, in the context of European trademark law, is “a set
of lines or contours that outline the product concerned” and not color alone without an outline. The ECJ noted that the “main element” of Louboutin’s
mark was a specific color and “shape” was employed only to the extent Louboutin identified where on its products that color would appear.</p>
<p>Notably, this is not the first victory for Louboutin’s red sole trademark. Back in 2012, Louboutin sued Yves Saint Laurent in the United States for Yves
Saint Laurent’s sales of monochromatic red shoes. While the Court of Appeals for the Second Circuit ruled that Louboutin’s trademark did not extend
to monochromatic shoes, it determined that the red sole trademark was a valid mark to the extent it contrasted with a shoe’s upper.</p>
<p>One need not look further than Cardi B or Lil Uzi Vert to understand why such a simple element can be entitled to trademark protection. Trademarks serve
as source-identifiers, designed to distinguish the goods and services of one from another. While this is generally accomplished through words or logos,
it can in fact extend to something as simple as the color of a shoe’s sole. It is why Cardi B knows listeners will think of Christian Louboutin, and
not Skechers, when she raps about her red bottoms&mdash;a valuable asset Louboutin appears set on maintaining.</p>
<p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/nicholas-j-krob" target="_blank" title="Nicholas J. Krob">Nicholas Krob</a></strong> is an Intellectual Property Attorney at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <strong><a href="https://www.ipmvs.com/" target="_blank" title="MVS Website">www.ipmvs.co</a></strong><strong><a href="https://www.ipmvs.com/" target="_blank" title="MVS Website">m</a></strong> or contact Nick directly via email at </em><strong><em><a href="mailto:nicholas.krob@ipmvs.com" title="email Nick" target="_blank"><em>nicholas.krob@ipmvs.com</em></a></em></strong><em>.</em> </p>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16572678&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fbloody-shoes-christian-louboutin-wins-battle-over-non-traditional-trademarkhttp://www.ipmvs.com/filewrapper/bloody-shoes-christian-louboutin-wins-battle-over-non-traditional-trademarkThu, 30 Aug 2018 05:00:00 GMTShoe Wars: Nike's Use of Utility Patents Against Puma<h3 class="hidden">Post By Mark D. Hansing</h3>
<p>The athletic shoe industry has seen many legal disputes. Intellectual property fights have included trademarks, copyrights, and design patents; all of
which protect some aspect of the <u>appearance</u> of the shoes or the logos on the shoes.&nbsp;</p>
<p>What is interesting about the recently filed <em>Nike Inc. v. Puma North America Inc</em>., Case No.<a href="https://www.law360.com/dockets/5b5f06314dbd061ad5100f5c">1:18-cv-10876</a>,
in the U.S. District Court for the District of Massachusetts is that it relates solely to <u>utility</u> patents. Utility patents cover some <u>structural</u> aspect of the shoe and its function (“utility”), as opposed to its ornamental appearance (“design”&mdash;e.g. whether it simply looks good). Also,
Nike has aggressively asserted that Puma has willfully infringed, which puts more at risk for Puma.&nbsp;</p>
<p style="font-size: 18px;"><strong>What is Covered by the Utility Patents?</strong>
</p>
<p><strong>Nike Shoe Upper Patent</strong>
</p>
<p>One Nike patent covers the shoe upper of the Nike Flyknit® brand shoe. One reason the lawsuit is important is that Nike alleges that shoe design has, to
date, resulted in over $1B in gross sales!&nbsp; Also of note is Nike’s allegation that they have obtained over 300 patents on Flyknit® design!</p>
<p>Nike advertises that the Flyknit® upper is a high strength fiber, seamless sock-like upper that is “scientifically tuned to provide areas of support, flexibility,
and breathability where athletes need them most”. The images below show it in assembled form (left) but before assembly (right):</p>
<p><img src="/MDH pic 1.JPG" style="float: left; margin: 0px 10px 10px 0px;">
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</p>
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<p>&nbsp;</p>
<p>&nbsp;</p>
<p>It essentially is a flexible, breathable fabric originally cut out in one piece and then assembled into a sock-like shoe upper that is stitched to a sole.</p>
<p>Below is Nike’s example of the allegedly infringing Puma IGNITE® ProKnit&trade; shoe, juxtaposed next to the patent claim Nike says that shoe infringes:</p>
<p><img src="/MDH pic 3.png" style="float: left; margin: 0px 10px 10px 0px;">
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</p>
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<p>The claim (above) defines what the Nike patent covers. Note how the claim includes words like “knitted textile material”, “a first region having stability
ribs”, “a junction between the upper member and the sole”. To infringe, Puma’s shoe has to have all of those things. Nike alleges Puma copied all features
of that claim, and that those features tie into the allegation that the patent does indeed advance athletic shoe technology because it does “provide
areas of support, flexibility, and breathability where athletes need them most”.</p>
<p><strong>Nike Shoe Sole Patent</strong>
</p>
<p>A second Nike patent relates to shoe soles, in particular, the famous Nike Air® sole. Nike describes this feature as “tough but flexible bags” filled with
gas or fluid in a sole which absorbs shock but is lighter than the foam most competitors use. Nike alleges it “absorbs impact forces that would otherwise
be exerted on the athlete’s muscles, joints and tendons, protecting the body against fatigue and stress. After impact, NIKE Air units return to their
original shape, ready for the next impact force.”&nbsp;</p>
<p>A Nike drawing (below) illustrates how the sole is pre-formed with reinforcing structural features to receive the bags:</p>
<p><img src="/MDH pic 4.png?Action=thumbnail&amp;algorithm=fill_proportional&amp;width=250&amp;height=300" style="float: left; margin: 0px 10px 10px 0px;" width="250" height="300">
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</p>
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<p>A Nike chart showing the patent claim next to Puma’s accused shoe is below:</p>
<p><img src="/MDH pic 5.png">
<br />
</p>
<p>Note how the Nike patent claim includes clauses like “fluid-filled bladder”, “a reinforcing structure secured to the bladder”, and “an inclined surface&hellip;located
over the bladder”. Nike alleges Puma has all these things in its “THE JAMMING&trade;” shoe.</p>
<p style="font-size: 18px;"><strong>Take-aways</strong>
</p>
<p><strong><strong>1. Functional Aspects of Apparel Can Be Patented</strong></strong>
</p>
<p>Although sometimes subtle, utility patents can be pursued to try to protect quite functional aspects of products. Puma argues in its answer to the Nike
complaint that the Nike claims are hopelessly broad, ambiguous, or lacking in novelty. But Nike only has to prove that Puma’s shoes have each of the
claimed combinations of features. Therefore, if you have products of this nature, at least seek out counsel on the possibility of utility patent protection.</p>
<p><strong><strong>2. Once Patented, the Patent is Difficult to Attack</strong></strong>
<br /> </p>
<p>Puma bears the burden in court to show those claims are too broad or not new. Thus, once obtained from the U.S. Patent Office, the patents are presumed
valid and can be asserted. They can be a powerful tool in a company’s intellectual property arsenal. Thus, even if you believe someone else’s patent
should not have been granted, get legal counsel because they are presumed valid.</p>
<p><strong><strong>3. Why is the Allegation of Willful Infringement Important?</strong></strong>
<br /> </p>
<p>If willfulness can be proved by Nike, it allows them to then request trebled damages (i.e. the Court multiples any monetary award by 3!). It also allows
the court to award Nike its attorneys’ fees (Puma pays not only its attorneys to defend, but also Nike’s attorneys!). These are powerful remedies.
The public policy is to deter intentional, unjustified infringement or egregious conduct. This will be Nike’s burden to prove up. But it is a little
known part of patent law that can be quite devastating to defendants. <strong>&nbsp;</strong>
</p>
<ul>
<li><strong>The Law has recently changed making willfulness easier to prove.</strong> </li>
</ul>
<p>In 2007, the <em>In re Seagate Technology, LLC</em>, 497 F.3d 1360 (Fed. Cir. 2007) case provided some relief. Whether or not you got a legal opinion was
not the touchstone. Rather an “objective recklessness” standard was adopted. This made willful infringement almost impossible to prove. If you had
a plausible explanation for why you, as a layperson, believed you either did not infringe or that the patent was not valid, it was difficult for the
patent owner to prove willfulness.</p>
<p>However, the pendulum has swung part way back. Recently the U.S. Supreme Court in&nbsp;<em><u><a href="http://www.ipwatchdog.com/wp-content/uploads/2017/09/Supreme-Court-Halo-Elecs.-Inc.-v.-Pulse-Elecs.-Inc.-No.-14-1513-6-13-16.pdf">Halo Electronics, Inc. v. Pulse Electronics, Inc.</a></u></em>,
136 S. Ct. 1923 (2016) changed from “objective recklessness” to “subjective recklessness”. It puts more weight on how reasonable the defendant’s knowledge
and beliefs are <u>at the time a decision is made to start selling the accused product</u>. In short, a defendant cannot have just a “plausible” belief
in non-infringement, there must be a good faith state-of-mind that supports the belief. This brings back into play the importance of getting a competent
and complete attorney opinion. Although not always required, it is the best way to avoid the risk of willfulness. This is shown by two recent lower
court cases.<strong>&nbsp;</strong>
</p>
<ul>
<li><strong>Once you get an infringement notice, do not ignore it.</strong> </li>
</ul>
<p>In <em>Dominion Res. Inc. v.&nbsp;Alstom Grid Inc.</em>, No. CV 15-224, 2016 WL 5674713 (E.D. Pa. Oct. 3, 2016) the Court held the defendant was willful.
The defendant argued it got an attorney’s opinion over one year after starting the product. The court found that opinion letters obtained so long after
infringement began was willful infringement under the subjective recklessness standard.</p>
<ul>
<li><strong>A legal opinion is not necessarily required, but you need legal advice to decide that.</strong> </li>
</ul>
<p>Since the 2016 Halo decision, findings of willfulness have jumped dramatically:</p>
<p><img src="/MDH pic 6.png?Action=thumbnail&amp;algorithm=fill_proportional&amp;width=400&amp;height=400" width="400" height="400">
<br />
</p>
<p>The “subjective recklessness” case does not say a legal opinion is required. There are certainly times when it is not. For example, if an asserted patent
is so clearly irrelevant to your product, you can have sufficient good faith state-of-mind to avoid willfulness. But the point is that you should at
least get legal advice as to what the patent might cover to allow you to demonstrate some reasonable basis for your position and why you could feel
comfortable not getting the full legal opinion.</p>
<p>In the <em>Nike v. Puma</em> complaint, Nike alleges that Puma’s conclusory answers to Nike’s notification letters about its patents meets the subjective
recklessness standard. This seems to push willfulness farther. Puma had attorneys’ opinions. Nike is focusing on the “state of mind” of Puma, arguing
that even with attorney’s opinions, if Puma does not provide to Nike more than vague denials, it indicates lack of good faith and even subjective belief
in non-infringement. This will have to be played out in court.&nbsp;</p>
<p><em><a href="https://www.filewrapper.com/attorneys/mark-d-hansing" target="_blank" title="Mark D. Hansing">Mark D. Hansing</a> is an Intellectual Property Attorney at McKee, Voorhees &amp; Sease PLC specializing in mechanical, electrical, and business method patents. Mark is a Member of the Firm and has been serving clients for over 30 years. </em>
<br />
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16569172&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fshoe-wars-nikes-use-of-utility-patents-against-pumahttp://www.ipmvs.com/filewrapper/shoe-wars-nikes-use-of-utility-patents-against-pumaWed, 22 Aug 2018 05:00:00 GMTDesign Patents and Indefiniteness<h3 class="hidden">Post By Luke T. Mohrhauser</h3>
<p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; In a recent decision, the Federal Circuit addressed indefiniteness and enablement issues
under 35 U.S.C. § 112 as they apply to design patent applications. In <em>In re: Ron Maatita</em>, the court held that two-dimensional drawings in
design patents can meet the definiteness and enablement requirements under § 112, and that the determination includes, at least in part, viewing the
drawings as an ordinary observer to determine if infringement comparisons could be made off of the two-dimensional depictions.</p>
<p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; The design patent application at issue covered the design of an athletic shoe bottom
(the sole or tread). The application consisted of two figures depicting two-dimensional views of the bottom of a shoe, and included solid and broken
lines (NOTE: broken lines in design patent application cover unclaimed environmental features). The application was rejected by the Examiner for failing
to satisfy the enablement and definiteness requirements of 35 U.S.C. § 112, first and second paragraphs. In part, the Examiner state that "the application's
use of a single, two-dimensional plan view to disclose a three-dimensional shoe bottom design left the design open to multiple interpretations regarding
the depth and contour of the claimed elements, therefore rendering the claim not enabled and indefinite".</p>
<p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Eventually, the application was appealed to the Board of Appeals, who affirmed the Examiner's
rejection, and Maatita appealed this rejection to the Federal Circuit.</p>
<p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; The Federal Circuit reversed the Board's decision. The court stated that the standard
for indefiniteness with respect to design patents is connected to the standard for infringement. A design patent is infringed if "an ordinary observer,
familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design."<em>Egyptian Goddess, Inc. v. Swisa, Inc.</em>,
543 F.3d 665, 672 (Fed. Cir. 2008) (en banc). The court felt that a design patent is indefinite under § 112 if one skilled in the art, viewing the
design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.
The court further stated:</p>
<p><em>In situations like this, where the sufficiency of a disclosure for purposes of § 112 depends on whether a drawing adequately discloses the design of an article, we believe that the level of detail required should be a function of whether the claimed design for the article is capable of being defined by a two-dimensional, plan- or planar view illustration. The design for an entire shoe or teapot, for instance, is inherently three-dimensional and could not be adequately disclosed with a single, plan- or planar view drawing. Whether an article infringed would depend on the perspective chosen to view the article, and a two-dimensional drawing provides no fixed perspective for viewing an article. The article would be infringing from one perspective but not from another. The design of a rug or placemat, on the other hand, is capable of being viewed and understood in two-dimensions through a plan- or planar-view illustration, which clearly defines the proper perspective. See Ex Parte Salsbury, 38 U.S.P.Q. 149, 1938 WL 28182, at *2 (Com'r Pat. &amp; Trademarks May 5, 1938) ("It is recognized that flat articles can generally be sufficiently illustrated by a single view.").&nbsp;&nbsp;&nbsp;&nbsp;</em>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;</p>
<p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; For Maatita's application, this meant that the two-dimensional drawings were enough
to meet the definiteness standard. The court held, "T]he fact that shoe bottoms can have three-dimensional aspects does not change the fact that their
ornamental design is capable of being disclosed and judged from a two-dimensional, plan- or planar-view perspective&mdash;and&nbsp;that Maatita's two-dimensional
drawing clearly demonstrates&nbsp;the perspective from which the shoe bottom should be viewed. A potential infringer is not left in doubt as to how
to determine infringement".</p>
<p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; The takeaway from this is that it is likely that the holding will provide with broader
coverage for Maatita, as infringement will occur from only a planar viewing of a potentially infringing shoe, and no additional contour or depth analysis
would be required.</p>
<p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; The holding provides an additional consideration to take into account when preparing
design patent applications, namely, are three-dimensional drawings necessary, and would there be better coverage with two-dimensional disclosures?
While the ability of the two-dimensional disclosures may not fit in every case, they could provide some additional kick in the right circumstances.
The proper use of drawings also rebuts a general notion that design patents are too narrow in coverage.</p>
<p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; <em><strong><a href="https://www.ipmvs.com/attorneys/luke-t-mohrhauser" target="_blank" title="Luke T. Mohrhauser">Luke T. Mohrhauser</a></strong> is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit<strong><a href="http://www.ipmvs.com/" target="_blank" title="MVS Website"> www.ipmvs.com</a></strong> or contact Luke directly via email at <strong><a href="mailto:luke.mohrhauser@ipmvs.com" target="_blank" title="email Luke">luke.mohrhauser@ipmvs.com</a></strong>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16567143&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fdesign-patents-and-indefinitenesshttp://www.ipmvs.com/filewrapper/design-patents-and-indefinitenessMon, 20 Aug 2018 05:00:00 GMTProtecting Your Nanotechnology Inventions - Part 2: Defining Your Invention<h3 class="hidden">Post By Jonathan L. Kennedy</h3>
<p>Have you invented materials with improved properties, such that you can seek to protect materials having those properties? Have you invented materials
with a new structure such that you can seek protection of that structure beyond your specific species of materials? Have you invented a method that
can be applied to items broader than your specific application? The answers to these questions can inform your goals for carving out a defined portion
of the competitive market, which in turn informs your intellectual property strategy. If your technology is a component in a larger product, which
is used in an industrial process, can you pursue protection for your component, the larger product containing your component, and use of that product
in the industrial process? The answers to these questions depend on your ability to properly define your invention.</p>
<p>There are two-sides to defining your invention – the state of the art and the technical details of your invention. The state of the art provides context
and boundaries for your invention. Beyond the specifics of your own research, prior art searches can be helpful in understanding the state of the art.
Art searches will help you understand what has already been discovered and the context of your discovery. This can assist in defining the metes and
bounds of your invention. The second side of defining your invention is to identify the technical specifics of your invention. This can be a proper
understanding of the structure and composition, how the structure and composition can be varied without departing from your inventive concept, substitutes
for components in your composition, properties of your invention, and how those properties are affected by different changes. Viewing these technical
details in light of the state of the art can assist in defining your invention.</p>
<p>Properly defining your nanotechnological invention is important for a number of reasons. One reason is that it will give your patent claims strength. A
properly defined invention will meet the requirements for definiteness and clarity, as well as provide a context that differentiates the claimed invention
from the art. This will aid in the examination of your patent application and the strength of your issued patent.</p>
<p>Another reason that properly defining your invention is important, is that it can limit the prior art effect of your own patent application against your
future innovations. Too often the tendency is to broadly define the invention so as to grasp as much as possible in a patent application, when the
heart of the invention may actually be narrower. This can lead to your first application impeding your own later patent applications directed to new
innovations in the same technical space.</p>
<p>This is the second post in a multipart series. Read the first post, “<a href="https://www.filewrapper.com/filewrapper/protecting-your-nanotechnology-inventions-part-1-defining-your-space?filewrapper=true">Protecting Your Nanotechnology Inventions – Part 1: Defining Your Space</a>”
for more information.</p>
<p>
<p><strong><em><a href="/attorneys/jonathan-l-kennedy" title="Jonathan L. Kennedy">Jonathan L. Kennedy</a></em></strong><em>,</em><em> is a Patent Attorney in the </em><strong><em><a href="https://www.ipmvs.com/services/biotechnology-patents" target="_blank" title="Biotechnology Patents page">Biotechnology &amp; Chemical Practice Group</a></em></strong><em> at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit</em><strong><em><a href="http://www.ipmvs.com/"> www.ipmvs.com </a></em></strong><em>or contact Jonathan directly via email at </em><strong><em><a href="mailto:jonathan.kennedy@ipmvs.com">jonathan.kennedy@ipmvs.com</a></em></strong><em>.</em>
</p>
<p>&nbsp;</p>
<br />
</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16565776&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fprotecting-your-nanotechnology-inventions-part-2-defining-your-inventionhttp://www.ipmvs.com/filewrapper/protecting-your-nanotechnology-inventions-part-2-defining-your-inventionSun, 19 Aug 2018 05:00:00 GMTBills in Congress would Revoke the PTAB and Restore Patentability of Several Products<h3 class="hidden">Post By Patricia Sweeney</h3>
<p dir="LTR" align="LEFT">Several bills have been introduced in Congress in the last two months that would have a big impact on patent law if passed. The first, introduced at the
end of June is HR6264, referred to as The Restoring American Leadership in Innovation Act. Among the provisions of this bill would be elimination of
the Patent Trial and Appeal Board (PTAB), the entity created by the March 2013 America Invents Act (AIA). The PTAB has been the subject of some controversy
as allegedly being overly aggressive in finding patents invalid and not affording patents the same protection provided in courts. Inter Parties Review
process would also be removed from the statutes. The section of the AIA of awarding patents to the first to file at the Patent Office would be repealed,
replaced with the prior first to invent system, and the PTAB replaced with the Board of Patents and Interferences.</p>
<p dir="LTR" align="LEFT">What is more, section 101 of the patent statutes would be revised. Currently, as per Supreme Court decisions a product of nature such as DNA is not patentable,
even if isolated from its natural environment. The law would be changed to state a product of nature is not patentable if it exists in nature "independently
of and prior to any human activity." The human involvement provision would make a number of biological products patentable that today would otherwise
not be patentable.</p>
<p dir="LTR" align="LEFT">Still another bill introduced at the end of July, the Inventor Protection Act, HR 6557, was introduced and would also make significant changes, but applies
only to inventor owned patents, as opposed to patents assigned by inventors to another entity. It would reverse court decisions that narrowed venue
of infringement actions and provide an action may be brought where the defendant is subject to the court’s jurisdiction where it has purportedly infringed.
The presumption of irreparable harm to an inventor upon finding infringement would also be restored, paving the way for less onerous proof to obtain
an injunction.</p>
<p dir="LTR" align="LEFT">Congressman Dana Rohrabacher of California has been involved in sponsoring or introducing the bills was has long been opposed to the AIA and its outcomes.</p>
<p dir="LTR" align="LEFT">Of course whether any bills makes it through Congress is unpredictable, but the current versions of these bills contain language that would significant
impact patent law. HR 6264 may be tracked <u><strong><a href="https://www.govtrack.us/congress/bills/115/hr6264" target="_blank" title="HR 6264">here</a></strong></u> <a href="https://www.govtrack.us/congress/bills/115/hr6264"><span lang="EN"></span></a><span lang="EN">and HR 6557 may be tracked <a href="https://www.govtrack.us/congress/bills/115/hr6557" target="_blank" title="HR 6557"><u><strong>here</strong></u></a></span> <a href="https://www.govtrack.us/congress/bills/115/hr6557" target="_blank" title="HR 6557"><u><strong><span lang="EN"></span></strong></u> </a>
<span lang="EN">.</span>
</p>
<p dir="LTR" align="LEFT"><span lang="EN"></span>
</p>
<p><em><strong><a href="/attorneys/patricia-a-sweeney" target="_blank" title="Pat A. Sweeney">Patricia Sweeney</a></strong> is an Intellectual Property Attorney in the Biotechnology &amp; Chemical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <strong><a href="https://www.ipmvs.com/" target="_blank" title="IPMVS">www.ipmvs.co</a></strong><strong><a href="https://www.ipmvs.com/" target="_blank" title="IPMVS">m</a></strong> or contact Pat directly via email at <strong><a href="mailto:patricia.sweeney@ipmvs.com" target="_blank" title="email Pat Sweeney">patricia.sweeney</a></strong></em><strong><em><em><a href="mailto:patricia.sweeney@ipmvs.com" target="_blank" title="email Pat Sweeney">@ipmvs.com</a></em></em></strong><em>. </em> </p>
<p>&nbsp;</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16547737&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fbills-in-congress-would-revoke-the-patent-trial-amp-appeal-board-and-restore-patentability-of-produchttp://www.ipmvs.com/filewrapper/bills-in-congress-would-revoke-the-patent-trial-amp-appeal-board-and-restore-patentability-of-producThu, 16 Aug 2018 05:00:00 GMTFederal Circuit Judge Calls for a Fix to the “Abstract Idea” Mess: Part 4<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p>Below you'll find the last and final post of this blog series concerning the "abstract idea". To read the previous posts, please view <strong><a title="Part 1 of the series" href="https://www.filewrapper.com/filewrapper/federal-circuit-judge-calls-for-a-fix-to-the-abstract-idea-mess?filewrapper=true" target="_blank">Part 1 of the series</a></strong>,&nbsp;<strong><a title="Part 2 of the series" href="https://www.filewrapper.com/filewrapper/federal-circuit-judge-s-proposals-for-fixing-the-abstract-idea-mess?filewrapper=true" target="_blank">Part 2 of the series</a></strong>,
and <strong><a title="Part 3 of the series" href="https://www.filewrapper.com/filewrapper/federal-circuit-judge-calls-for-a-fix-to-the-abstract-idea-mess-part-3?filewrapper=true" target="_blank">Part 3 of the series</a></strong>.</p>
<p>Prior blog posts illustrate concern from judges of the Court of Appeals for the Federal Circuit regarding the abstract idea judicial exception to § 101
patentable subject matter. In yet another decision by the Federal Circuit this spring, two additional judges, Lourie and Newman, express their concern
about this aspect of patent law. See Berkheimer v. H. P. Inc., Case No. 2017-1437 (Fed. Cir. May 31, 2018).&nbsp;</p>
<p>The judges acknowledge that many in the patent field believe there are problems with § 101, such that the law needs clarification, probably by Congress,
rather than by their Court. The judges state that patent eligibility under § 101 used to be a fairly simple analysis in the rare instances when it
arose. However, it is now a complicated multiple-step consideration, which has led to an increasing amount of inventive research no longer being subject
to patent protection. Even meritorious inventions that combined and utilized man-made tools of biotechnology in revolutionary ways have been held ineligible
subject matter. Judges Lourie and Newman agree that many brilliant and unconventional ideas are beyond patenting, simply because they are “only” ideas.
They also suggest that the two-step abstract idea analysis has morphed into facts normally considered under § 102 (anticipation) and 103 (obviousness)
of the patent statute.&nbsp;</p>
<p>These two judges conclude that the current dilemma of § 101 has dug a deep hole of complicated analysis which needs resolution. Thus, at least four Federal
Circuit judges have recently acknowledged this problem that effects&nbsp;many in the patent world, and strongly suggested that it's time to fix this
mess.</p>
<p><em><strong><a title="Kirk M. Hartung" href="/attorneys/kirk-m-hartung" target="_blank">Kirk M. Hartung</a></strong> is a Patent Attorney in the <strong><a title="Mechanical Patents" href="https://www.ipmvs.com/services/mechanical-patents" target="_blank">Mechanical and Electrical Patent Practice Group</a></strong> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit<strong><a title="MVS Website" href="http://www.ipmvs.com/" target="_blank"> www.ipmvs.com</a></strong> or contact Kirk directly via email at <strong><a title="email Kirk Hartung" href="mailto:kirk.hartung@ipmvs.com" target="_blank">kirk.hartung@ipmvs.com</a></strong>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16564291&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252ffederal-circuit-judge-calls-for-a-fix-to-the-abstract-idea-mess-part-4http://www.ipmvs.com/filewrapper/federal-circuit-judge-calls-for-a-fix-to-the-abstract-idea-mess-part-4Thu, 16 Aug 2018 05:00:00 GMTAn IPR Appellant Must Establish an Injury to Have Standing<h3 class="hidden">Post By Blog Staff</h3>
<p>In <em>JTEKT Corp. v. GKN Auto. Ltd.</em>, Appeal No. 2017-1828 (Fed. Cir. Aug. 3, 2018), the United States Court of Appeals for the Federal Circuit (CAFC)
dismissed an inter partes review (IPR) appeal due to lack of standing. The requirement for an appellant to establish an injury in fact remains firm.</p>
<p>JTEKT petitioned for an IPR on a patent owned by GKN. The Patent Trial and Appeal Board (PTAB) instituted the review and held that two claims were obvious
in light of other technology, but upheld other claims. JTEKT appealed PTAB’s decision regarding the upheld claims, and GKN based a motion to dismiss
on lack of standing.</p>
<p>According to the IPR statute, any person or entity may petition the Patent Office to institute an IPR proceeding. There is not a requirement that the petitioner
have Article III standing because petitioners need not have a concrete stake in the outcome of the IPR proceeding. An unsuccessful petitioner may appeal
an adverse IPR written decision to the CAFC, however the court has stated that the IPR statute cannot be read to waive the Article III injury-in-fact
requirement for appeal to the federal court. The CAFC, in this decision, reaffirms that an appellant has an obligation to establish an injury in fact
to have standing.</p>
<p>The Supreme Court has made it clear that an injury in fact must not be conjectural or hypothetical, but both concrete and particularized. Moreover, CAFC
cases establish that typically the requisite injury for an IPR appeal is that the appellant must show that it is engaged, or likely will engage, in
activity likely to cause infringement, or has affected contractual rights. While not having a product currently on the market does not preclude petitioning
for an IPR decision appeal, the petitioner cannot rely on potential infringement liability. There must be concrete plans for future activity likely
to create a substantial risk of future infringement.</p>
<p>JTEKT did not meet this burden, and did not establish that its planned product would create a substantial risk of infringement and GKN has not alleged
so. JTEKT stated that their products are in development, currently evolving, and not finalized, with just a potential risk of infringement. The CAFC
held that because there is no concrete or substantial risk of infringement, nor is it likely to lead to charges of infringement, there is no injury.</p>
<p>The CAFC also rejected JTEKT’s contention that IPR estoppel constitutes an injury.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16547725&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fan-ipr-appellant-must-establish-an-injury-to-have-standinghttp://www.ipmvs.com/filewrapper/an-ipr-appellant-must-establish-an-injury-to-have-standingFri, 10 Aug 2018 05:00:00 GMTFederal Circuit Judge Calls for a Fix to the “Abstract Idea” Mess: Part 3<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p>This abstract idea case continues to stir up important matters that we all need to keep a close eye on. Below you'll find part 3 of this blog series concerning
the "abstract idea". To read the previous posts, please first view <strong><a title="Part 1 of the series" href="https://www.filewrapper.com/filewrapper/federal-circuit-judge-calls-for-a-fix-to-the-abstract-idea-mess?filewrapper=true" target="_blank">Part 1 of the series</a></strong>,
and then view<strong><a title="Part 2 of the series" href="https://www.filewrapper.com/filewrapper/federal-circuit-judge-s-proposals-for-fixing-the-abstract-idea-mess?filewrapper=true" target="_blank"> Part 2 of the series</a></strong>.</p>
<p>The previous posts regarding the dissent by Judge Plager of the Court of Appeals for the Federal Circuit (CAFC) on June 20, 2018, is not an isolated or
first instance that a Federal Circuit judge has lamented about the difficulties and problems existing under the current state of the law for the judicial
acceptations to § 101 patentable subject matter. Last year, Judge Linn of the CAFC issued a dissent expressing his frustration with the two-part patent
eligibility test set forth by the Supreme Court in <em>Alice</em>.</p>
<p>Initially, Judge Linn acknowledged the well-recognized principle that the language of the patent subject matter statute, § 101, has a wide and permissive
scope for patent eligibility, as plainly contemplated by Congress. Judge Linn also noted that the judicial exceptions to patentable subject matter
(laws of nature, natural phenomena, and abstract ideas), applies narrowly, as stated by the Supreme Court in <em>Alice</em> and <em>Mayo.</em>
</p>
<p>Despite the wide scope of § 101 and the narrow scope of the judicial exceptions, Judge Linn stated, “The abstract idea exception is almost impossible to
apply consistently and coherently”. The two-part test (first, is the claim directed towards an abstract idea, and second, whether the claim contains
something more in terms of inventive concept) is indeterminate and leads to arbitrary results. Judge Linn has seen the abstract idea exception strike
down claims covering meritorious inventions not because they attempt to appropriate a basic building block of scientific or technological work, which
was the genesis of the exception, but rather, simply because it fails the two-part test.</p>
<p>The judge noted that the test often results in re-characterization of the claims and leads to his rhetorical questions as to which claim limitations matter,
and which do not, and which claim limitations should be considered and which should be ignored? There is still a great amount of uncertainty, despite
the numerous cases which have faced these questions and attempted to provide practical guidance. In Judge Linn’s words, “the danger of getting the
answers wrong are greatest for some of today’s most important inventions, including those relating to computing, medical diagnostics, artificial intelligence,
the Internet of Things, and robotics, among other things”.
<br />
</p>
<p>Judge Linn concluded that claims which are directed not merely to basic building blocks of scientific or technological activity, but instead to innovative
solutions to real problems that result from human activity and are not capable of performance solely in the human mind, should be fully eligible for
patent protection.&nbsp;</p>
<p>See <em>Smart Systems Innovations, LLC v. Chicago Transit Authority et al.,</em> Case No. 216-233 (Fed. Cir October 18, 2017).</p>
<p>
<p><em><strong><a href="/attorneys/kirk-m-hartung" target="_blank" title="Kirk M. Hartung">Kirk M. Hartung</a></strong> is a Patent Attorney in the <b><a href="https://www.ipmvs.com/services/mechanical-patents" title="Mechanical Patents">Mechanical and Electrical Patent Practice Group</a></b> at McKee, Voorhees &amp; Sease, PLC. For additional information please visit<strong><a href="http://www.ipmvs.com/" target="_blank" title="MVS Website"> www.ipmvs.com</a></strong> or contact Kirk directly via email at <strong><a href="mailto:kirk.hartung@ipmvs.com" target="_blank" title="email Kirk Hartung">kirk.hartung@ipmvs.com</a></strong>.</em>
<br />
</p>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16543640&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252ffederal-circuit-judge-calls-for-a-fix-to-the-abstract-idea-mess-part-3http://www.ipmvs.com/filewrapper/federal-circuit-judge-calls-for-a-fix-to-the-abstract-idea-mess-part-3Wed, 08 Aug 2018 05:00:00 GMTPost-Grant Review of CBM Patents<h3 class="hidden">Post By Blog Staff</h3>
<p>A previous Filewrapper<sup>®</sup> blog post regarding the legal standard for determining whether a patent qualifies as a Covered Business Method (CBM)
patent can be found <strong><a href="https://www.filewrapper.com/filewrapper/federal-circuit-offers-guidance-on-the-legal-standard-for-cbm-patents?filewrapper=true" target="_blank" title="Federal Circuit Offers Guidance on the Legal Standard for CBM Patents">here</a>.</strong> </p>
<p>To better understand that discussion, it may be helpful to explain the nature of a CBM patent and the process of reviewing a CBM patent post-grant, which
the America Invents Act (AIA) refers to as a “transitional post-grant review proceeding”. A transitional post-grant review proceeding of a CBM patent
(CBM patent review) is an action that can be taken to review the validity of a patent before the Patent Trial and Appeal Board (PTAB) after a patent
has been issued similar to an Inter Partes Review (IPR) or a Post Grant Review (PGR). CBM patent reviews are established and set forth in section 18
of the AIA.</p>
<p>A CBM patent review is only available for patents that qualify as CBM patents. In section 18 of the AIA, a “covered business method patent” is defined
as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration,
or management of a financial product or service, except that the term does not include patents for technological inventions”.</p>
<p>Additionally, there are differences between CBM patent reviews as compared to IPRs or PGRs. For example, in order to bring action for a CBM patent review,
the petitioner must have been sued for infringement, which is not the case for IPRs or PGRs. Also, CBM patent reviews offer more avenues for a petitioner
to argue that a patent is invalid. For example, IPRs can only invalidate patents based on 35 U.S.C. §§ 102 (novelty) and 103 (non-obviousness) arguments
based on patents or printed publications (Cited 37 C.F.R. § 42.104). CBM patent reviews, however, allow petitioners to invalidate patents based on
any condition for patentability including 35 U.S.C §§ 101 (patent eligible subject matter), 102 (novelty), 103 (non-obviousness), and 112 (specification
requirements) (Cited 37 C.F.R. § 42.304).</p>
<p>CBM patent reviews are a tool accused infringers can use to invalidate a patent, but the days of CBM patent reviews are numbered. The AIA made clear that
post-grant review of CBM patents is a transitional program by setting an 8-year expiration date for the program from the time the AIA took effect.
Therefore, post-grant review of CBM patents will end in 2020.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16540170&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fpost-grant-review-of-cbm-patentshttp://www.ipmvs.com/filewrapper/post-grant-review-of-cbm-patentsThu, 02 Aug 2018 05:00:00 GMTBeing Old Does Not Equate to Being Less Valuable<h3 class="hidden">Post By Xiaohong Liu</h3>
<p>Last Friday, a Delaware federal jury awarded IBM Corp. more than $82 million after finding Groupon Inc. infringed four e-commerce patents (5,796,967; 7,072,849;
5,961,601; and 7,631,346). These patents relate generally to online customized advertisement services and so-called single-sign-on technology. The
oldest patent has a priority date of July 15, 1988 and was granted on August 18, 1998, almost 20 years ago. The newest patent has a priority date of
April 1, 2005 and was granted December 8, 2009. Clearly, at least some of the technologies in these patents were conceived before the web and online
shopping became a part of our lives.</p>
<p>Groupon argued that it did not infringe on any valid IBM patents and the asserted patents were old and did not have any value for the operations on the
World Wide Web currently used not only by Groupon, but many other websites. Obviously, the jury thought otherwise, especially considering the fact
that others are paying for them. After about 10 days of trial, jurors found that Groupon willfully infringed the patents. They were ordered to pay
$82.5 million, which is about half of what IBM had sought in the case. However, since the jury found that Groupon’s infringement was willful, it is
possible that the judge in this case could triple the damage award in coming weeks. IBM filed the suit against Groupon in 2016 after a three-year negotiation
for a license agreement failed.</p>
<p>IBM has not just gone after Groupon. They have been waging war with other online businesses over the same patents. Previously, IBM filed a similar case
against Priceline Group Inc., now Booking Holdings Inc., which was dismissed following a settlement that included a $34 million payment by Priceline,
with an additional contingent payment due. According to IBM, various companies, including Amazon.com and Google, have already paid for licenses to
the same patents.
<br />
</p>
<p>It is good to be reminded that a patented idea or technology still has value despite its old age.</p>
<p><em><strong><a href="/attorneys/xiaohong-liu-ph-d" target="_blank" title="Xiaohong Liu, Ph.D.">Xiaohong Liu, Ph.D.,</a></strong> is an Intellectual Property Attorney in the Biotechnology &amp; Chemical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. He is a native Chinese speaker and would be happy to discuss this topic with you in further detail. For additional information, please visit <a href="http://www.ipmvs.com/" target="_blank" title="IPMVS"><strong>www.ipmvs.co</strong><strong>m</strong></a> or contact Xiaohong directly via email at </em><strong><em><a href="mailto:xiaohong.liu@ipmvs.com" title="email Xiaohong"><em>xiaohong.liu@ipmvs.com</em></a></em></strong><em>.</em> </p>
<p>&nbsp;</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16535612&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fbeing-old-does-not-mean-less-valuablehttp://www.ipmvs.com/filewrapper/being-old-does-not-mean-less-valuableMon, 30 Jul 2018 05:00:00 GMTGene Editing Regulatory Setback<h3 class="hidden">Post By Heidi S. Nebel</h3>
<p>The gene editing world was dealt a tremendous blow by the European Union (EU) in a decision issued July 25, 2018. The shock comes as the United Stated
Department of Agriculture (USDA) recently announced that it would treat all gene edited crops with a deletion as outside of the regulations relating
to “genetically modified” crops.&nbsp; &nbsp;&nbsp;</p>
<p>Hopes that this acceptance of gene editing would open the floodgates for vast improvements in crops, were dashed yesterday as the EU announced that it
will treat gene edited crops as “genetically modified”. The decision was handed down by the Court of Justice of the European Union, finding that these
crops fall under the 2001 directive on genetically modified crops. The directive introduced the most restrictive GMO regulations in the world and was
aimed at species into which entire heterologous genes had been inserted. Importantly, the directive exempts organisms whose genomes were modified using
mutagenesis techniques, such as irradiation, which introduce changes to the DNA material, but does not insert foreign genetic material.&nbsp;</p>
<p>The court had been asked to interpret the 2001 directive in light of newly emerging gene editing technology. It certainly seems that deletion gene editing
is more akin to mutagenesis than insertion of foreign genes, however, the ruling held that mutagenesis techniques developed after 2001 did not have
a sufficient record of safety to qualify for the exemption granted for mutation breeding. In a small glimmer of hope, the ruling leaves open the possibility
that if gene editing techniques could prove as safe as mutagenesis then they too, could earn an exemption, but how long will that take? Nonetheless
the immediate chilling effect on agricultural research cannot be denied.</p>
<p><em><strong><a title="Heidi S. Nebel" href="/attorneys/heidi-s-nebel" target="_blank">Heidi S. Nebel</a></strong> is the Chair of the&nbsp;<strong><a href="https://www.ipmvs.com/services/biotechnology-patents" target="_blank" title="Biotechnology Patents page"><a href="https://www.ipmvs.com/services/biotechnology-patents" target="_blank" title="Biotechnology Patents page">Biotechnology</a></a><a href="https://www.ipmvs.com/services/chemical-patents" target="_blank" title="Chemical Patents Page">&nbsp;&amp; Chemical</a> </strong>Practice Group at MVS. She serves as the Managing Member of the Firm and has been assisting clients with intellectual property matters for over 25 years.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16529513&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fgene-editing-regulatory-setbackhttp://www.ipmvs.com/filewrapper/gene-editing-regulatory-setbackFri, 27 Jul 2018 05:00:00 GMTAUTM’s Recommends Narrow Changes to NIST on the ROI Initiative<h3 class="hidden">Post By Oliver Couture</h3>
<p>The National Institute of Standards and Technology (NIST) recently issued a public Request for Information for the Return on Investment (ROI) Initiative.
<u><strong><a href="https://www.autm.net/" title="AUTM">The Association of Technology Managers (AUTM)</a></strong></u>, who supports the ROI Initiative,
stresses in their response that the fundamental principles of the Bayh-Dole Act be preserved. As pointed out by AUTM, Bayh-Dole has significantly contributed
to the commercialization of federally-funded projects due to four main principles. Specifically, decentralizing the ownership of technology, establishing
clear rules that are uniform across all government agencies, create strong incentives for university-industry partnerships, and clarifying patent ownership.
For example, prior to Bayh-Dole, not a single new drug was developed when the government would have owned the patent rights. However, since Bayh-Dole
there have been approximately 200 new drugs and vaccines have been developed. AUTM also warned that lax oversight was threatening Bayh-Dole.</p>
<p>AUTM’s recommendations center around reinforcing the four reasons why Bayh-Dole has been so successful, such as improving clarity in subject matter eligibility
and fixing inter partes review (IPRs). Further, AUTM recommends that a dedicated office at the Department of Commerce or additional resources be allocated
to NIST to properly oversee Bayh-Dole to ensure that Bayh-Dole is maintained. Additionally, AUTM recommends streamlining procedures and adopting the
best practices across all federal agencies to make it simpler for potential licencors to satisfy requirements like the public posting.</p>
<p>AUTM also urges federally funded researchers and private business to&nbsp;work more closely so as to better understand the needs of&nbsp;one another, for
example, by clarifying policies and practices to the other and attending conferences outsides what they would normally attend. This would increase
the potential for more licensing and more innovations being commercialized. AUTM also recommends providing more incentives, like factoring technology
transfer into performance reviews, or tax-exempt bonds for business to work with research facilities.</p>
<p>Ultimately, AUTM argues for the clarity of Bayh-Dole to be maintained. This will allow research facilities, like universities, to continue to use federal
funding to perform the basic research that private businesses won't do, but still allow clear title of the invention for private businesses to feel
secure investing in and bring those inventions to market, as most universities are unable to commercialize their inventions.</p>
<p>&nbsp;</p>
<p><em><em><strong><a href="/attorneys/oliver-p-couture-ph-d" title="Oliver P. Couture, Ph.D." target="_blank">Oliver P. Couture</a></strong> is an Intellectual Property Attorney in the Biotechnology &amp; Chemical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <strong><a href="https://www.ipmvs.com/" target="_blank" title="IPMVS">www.ipmvs.co</a></strong><strong><a href="https://www.filewrapper.com/filewrapper/www.ipmvs.com">m</a></strong> or contact Oliver directly via email at <strong><a href="mailto:oliver.couture@ipmvs.com" title="email Oliver">oliver.couture</a></strong></em> <a href="mailto:oliver.couture@ipmvs.com"><strong><em><em>@ipmvs.com</em></em></strong> </a><em>. </em> </em>
</p>
<br />
<p>&nbsp;</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16530396&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fautm-s-recommends-narrow-changes-to-nist-on-the-roi-initiativehttp://www.ipmvs.com/filewrapper/autm-s-recommends-narrow-changes-to-nist-on-the-roi-initiativeFri, 27 Jul 2018 05:00:00 GMTHave You “Got Milk”?<h3 class="hidden">Post By Christine Lebron-Dykeman</h3>
<p>When you hear the term “Milk”, what comes to mind? Do you automatically think of cow’s milk (or perhaps sheep or goat milk) or do you have a broader definition
in mind that covers almond, soy, cashew and other nuts, soybeans, or other plant sources?</p>
<p>In 2013, a class action lawsuit was filed claiming that plant-based products labeled as milk are misleading to consumers as these products violate the
FDA standard of identity for milk. The lawsuit was dismissed after the district court found that the FDA had no proscribed name for these plant-based
drinks, and the names soymilk, coconut milk etc. accurately identified the basic nature of the drinks while correspondingly distinguishing them from
milk derived from dairy cows. In dismissing this case, the court also explained that the plaintiffs’ claim that “a reasonable consumer would view the
terms ‘soymilk’ and ‘almond milk,’ disregard the first words in the names, and assume that the beverages come from cows &hellip; stretches credulity.”<em>Ang et al v. Whitewave Foods Company et al</em>.,
Case No. 13-cv-1953.</p>
<p>This issue has not gone away however. Last year, Wisconsin Democratic Senator Tammy Baldwin sponsored the Dairy Pride Act that proposed to forbid the marketing
as “dairy” any food not primarily derived from “the lacteal secretion, practically free from colostrum, obtained by the complete milking of one or
more hooved mammals.” Legislative action on this bill did not gain much traction, but the issue arose again last week when FDA Commissioner Scott Gottlieb
said that the Trump administration will move to crack down on the use of the term “milk” for non-dairy products.</p>
<p>I raise this issue from a trademark perspective. Considering that plant-based “milk” products have been sold for decades, and there are numerous trademarks
incorporating the term MILK currently registered on the United States Patent and Trademark Office Registry, you may wonder how the Gottlieb proposal
will affect the rights of these trademark owners. If these trademark owners can no longer use the word “milk” to describe their products, they will
be unable to use their federally registered trademarks in commerce and they will lose all the goodwill they have acquired through decades of sales
and advertising. Eventually, those marks will be cancelled. This raises the question is it fair for the FDA to enforce a standard it neglected for
decades and to viably take away the rights some trademark owners have had since the 1980s. Food for thought.</p>
<p><em><strong><a title="Christine Lebron-Dykeman" href="/attorneys/christine-lebron-dykeman" target="_blank">Christine Lebron-Dykeman</a></strong> is Chair of the Trademark Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit<a href="http://www.ipmvs.com/" target="_blank" title="IPMVS"><strong> www.ipmvs.co</strong><strong>m</strong></a> or contact Christine directly via email at<strong><a href="mailto:christine.lebron-dykeman@ipmvs.com" title="email Christine"> christine.lebron-dykeman@ipmvs.com</a></strong>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16530399&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fhave-you-got-milkhttp://www.ipmvs.com/filewrapper/have-you-got-milkFri, 27 Jul 2018 05:00:00 GMTFederal Circuit Judge Calls for a Fix to the “Abstract Idea” Mess: Part 2<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p>Last week, I began a blog series on the "Abstract Idea" and hope you will continue to follow this critical topic. The previous post from last week can
be found <b><a href="https://www.filewrapper.com/filewrapper/federal-circuit-judge-calls-for-a-fix-to-the-abstract-idea-mess?filewrapper=true" target="_blank" title="previous Abstract Idea post">here</a></b>.&nbsp;
<br />
</p>
<p>The concerns regarding the current state of the law regarding patent eligibility raised by Judge Plager in his recent dissent in the decision by the Court
of Appeals for the Federal Circuit in<em> Interval Licensing</em> (see previous blog post on this subject) are not new or limited to a small group
of patent lawyers, owners, or judges.</p>
<p>Judges and lawyers have a shared belief in the uselessness of the abstract notion of “abstract ideas” as a criterion for patent eligibility. Judge Plager
suggests that the current statutory criteria for patent validity set forth in the Patent Act eliminates the need for the abstract doctrine. The “abstract
ideas” doctrine has proved unworkable and adds nothing to ensuring patent quality that the statutory requirements do not already provide.</p>
<p>Judge Plager acknowledges that there is no particular incentive for the Supreme Court to immerse itself in this incoherent doctrine that has taken on a
life of its own, such that it will take special effort by judges and the patent bar to get the Court’s attention. Otherwise, perhaps Congress can provide
a fixed, “though waiting for that may be the ultimate test of patience.”</p>
<p>Judge Plager offered another option for trial courts who are faced with the section 101 abstract idea defense, and the inherent difficulties it creates
for the courts. Rather than addressing this issue first, as is often done now, the courts could defer this until after addressing the other statutory
requirements for a patent under sections 102, 103 and 112. The two-part <em>Alice </em>abstract idea test for patent eligibility would remain in the
case, but only be considered if the patent survives the other validity challenges.</p>
<p>In conclusion, Judge Plager states that the legitimate expectations of the innovation community, as well as basic notions of fairness in due process, compel
us to address this §101 conundrum.</p>
<p>
<p><em><strong><a href="/attorneys/kirk-m-hartung" target="_blank" title="Kirk M. Hartung">Kirk M. Hartung</a></strong> is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit<strong><a href="http://www.ipmvs.com/"> www.ipmvs.com</a></strong> or contact Kirk directly via email at <strong><a href="mailto:kirk.hartung@ipmvs.com" title="email Kirk Hartung">kirk.hartung@ipmvs.com</a></strong>.</em>
<br />
</p>
<br />
</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16511310&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252ffederal-circuit-judge-s-proposals-for-fixing-the-abstract-idea-messhttp://www.ipmvs.com/filewrapper/federal-circuit-judge-s-proposals-for-fixing-the-abstract-idea-messWed, 25 Jul 2018 05:00:00 GMTFederal Circuit Judge Calls for a Fix to the “Abstract Idea” Mess: Part 1<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p style="margin-left: 20px;">I will be posting for the next several weeks in a series regarding the infamous "Abstract Idea" Mess. Stay tuned for next week's series follow-up!
<br />
</p>
<p style="margin-left: 20px;">In a decision of the United States Court of Appeals for the Federal Circuit (CAFC) dated July 20, 2018, and including AOL, Apple, Google and Yahoo as defendants,
Judge Plager issued a 17-page dissent calling the current state of the law on patent eligibility to be unworkable and in need of a fix. Judge Plager,
who has served on the CAFC since 1989, lamented that the state of the law gives little confidence that the outcomes are correct, and renders it nearly
impossible to know with any certainty whether an invention is or is not patent eligible.</p>
<p style="margin-left: 20px;">The dissent notes that there are three judicially created exceptions to 35 U.S.C. § 101, which defines patentable inventions as a new and useful process,
machine, manufacture, or composition of matter. The three exceptions are <strong>laws of nature, natural phenomenal, and abstract ideas</strong>, with
“abstract ideas” being the most troublesome. In 2014, the U.S. Supreme Court set forth an analytical structure for evaluating whether a claimed invention
is a non-patentable abstract idea in<em> Alice Corp. v. CLS Bank International</em>, 134 S. Ct. 2347 (2014). As Judge Plager notes, the phrase “abstract
idea” is a definitional morass, because neither the Supreme Court nor the CAFC (effectively the final Appellate Court for most patent appeals) has
provided a single, succinct, usable definition. One problem is that defining “abstract ideas” cannot be done except through the use of equally abstract
terms. By analogy, “abstract ideas” is like “obscenity” in that both failed to provide the specificity and clarity that makes it useful for future
prediction of outcome in any given case.</p>
<p style="margin-left: 20px;">Judge Plager also discussed the two-step process of <em>Alice</em>: first determine whether the claims are directed to an abstract idea, and if so, then
determine whether the claims involve an “inventive concept,” in which case the claims will be patentable.</p>
<p style="margin-left: 20px;">Judge Plager notes a first puzzle in that if the Court, after reviewing the claims in light of the specification, determines that the claims are abstract,
how does the same court then read the claims again and conclude that they are “un-abstract”. An even bigger puzzle is the history of “inventive concept”.
The 1952 Patent Act, written in large part by Judge Giles Rich, who dedicated his life to patent law, repeatedly explained that the new § 103 non-obviousness
provision obviated the concept of “inventive concept”. Now, 65 years later, “inventive concept” is alive and well, even though Congress agreed that
“inventive concept” was unworkable by their adoption of the 1952 Patent Act.</p>
<p style="margin-left: 20px;">Judge Plager points out that he is not criticizing the work of the Supreme Court nor of the CAFC, but merely acknowledges the many problems with the current
law of “abstract ideas” and “inventive concept”. He joins at least two other judges from the Court of Appeals for the Federal Circuit who have critiqued
the “abstract idea” test and the complex issues of the current § 101 patent eligibility jurisprudence which many considered to be highly problematic.
This is a real problem with almost universal criticism among commenters and academicians regarding the havoc created in the latent law by the “abstract
idea” idea. The<em> Alice</em> test has not produced coherent, readily understandable, replicable, and demonstrably just outcomes. Judge Plager concludes
that the current state of the law does not serve either the patent law nor the public well.</p>
<p style="margin-left: 20px;">See the full decision,&nbsp;Interval Licensing LLC v. AOL, Inc., Apple,&nbsp;Inc., Google LLC,&nbsp;Yahoo!, Inc., case numbers 2016-2502, 2016-2505, 2016-2506,
2016-2507, July 20, 2018.&nbsp;</p>
<p style="margin-left: 20px;">&nbsp;</p>
<p><em><strong><a href="/attorneys/kirk-m-hartung" target="_blank" title="Kirk M. Hartung">Kirk M. Hartung</a></strong> is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit<strong><a href="http://www.ipmvs.com/"> www.ipmvs.com</a></strong> or contact Kirk directly via email at <strong><a href="mailto:kirk.hartung@ipmvs.com" title="email Kirk Hartung">kirk.hartung@ipmvs.com</a></strong>.</em>
<br /> </p>
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<p>&nbsp;</p>
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<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16493225&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252ffederal-circuit-judge-calls-for-a-fix-to-the-abstract-idea-messhttp://www.ipmvs.com/filewrapper/federal-circuit-judge-calls-for-a-fix-to-the-abstract-idea-messTue, 24 Jul 2018 05:00:00 GMTWhat is an Abstract Idea?<h3 class="hidden">Post By Blog Staff</h3>
<p>In January of 2018, the United States Patent and Trademark Office (USPTO) published its latest revision of the Manual of Patent Examining Procedure (MPEP).
With regard to patent eligibility, especially on the issue of abstract ideas, the MPEP was extensively updated.</p>
<p>The January revision lays out a similar process as was previously used to determine whether a proposed invention is patent eligible. The claimed invention
must fall into one of the four statutory categories recited in 35 U.S.C. 101 (i.e. it must be a process, machine, manufacture, or composition of matter).
Discussion of a recent Federal Circuit case where a claimed invention was found to not be patentable based on failing to be directed to statutory subject
matter can be found <u><b><a href="https://www.filewrapper.com/filewrapper/federal-circuit-addresses-patentability-in-terms-of-non-statutory-subject-matter?filewrapper=true">here</a></b></u>.
In addition to the claimed invention falling into one of the four statutory categories of patent eligible subject matter, it must not be directed to
a law of nature, natural phenomena, or an abstract idea (judicial exceptions) unless the claim recites additional elements that amount to significantly
more than the judicial exception.</p>
<p>Since neither the courts nor the legislature have defined what constitutes an abstract idea, when determining whether a claim is directed to an abstract
idea, examiners are instructed to identify the claimed concept and compare it to concepts that courts have previously decided to be abstract. The latest
MPEP revision provides many examples of what courts have identified as abstract ideas.</p>
<p>The MPEP articulates four concepts that the courts have identified as abstract ideas: “fundamental economic practices”, “certain methods of organizing
human activity”, “an idea ‘of itself’”, and “mathematical relationships/formulas”. Additionally, the MPEP described claims that are not directed to
abstract ideas. The MPEP states that “if a claim is based on or involves an abstract idea, but does not recite it, then the claim is not directed to
an abstract idea”. Additionally, “if a claim recites an abstract idea, but the claim as a whole is directed to an improvement or otherwise clearly
does not seek to tie up the abstract idea, then the claim is not directed to an abstract idea”.</p>
<p>Further, the MPEP discusses claims directed to improvements in computer functionality. These types of claims are not automatically considered abstract
ideas and may be patentable when appropriately claimed. In order for an improvement in computer functionality to be patentable, the specification “should
disclose sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement, and the claim
itself must reflect the improvement in technology”. The MPEP also states that “if a claimed process can be performed without a computer ... it cannot
improve computer technology” and therefore is not patentable.</p>
<p>Without a definition of what constitutes an abstract idea, the issue is still murky, but the January MPEP revision has offered some guidance.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16511126&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fwhat-is-an-abstract-ideahttp://www.ipmvs.com/filewrapper/what-is-an-abstract-ideaTue, 24 Jul 2018 05:00:00 GMTFederal Circuit Addresses Patentability in Terms of Non-Statutory Subject Matter<h3 class="hidden">Post By Blog Staff</h3>
<p>On June 20, 2018, in <em>In re Wang</em>, the United States Court of Appeals for the Federal Circuit (CAFC) held that patent application claims describing
a phonetic symbol system were not patentable because it was directed to non-statutory subject matter. Patentable subject matter is laid out in 35 U.S.C.
§ 101, which states that patentable inventions must be a “process, machine, manufacture, or composition of matter”.</p>
<p>The phonetic symbol system consists of using a single letter or a combination of letters of the English alphabet to represent phonetic symbols. Each vowel
and consonant in the English alphabet is then represented by a distinct phonetic symbol.</p>
<p>In its reasoning, the CAFC highlights the fact that an invention is only patentable if it is a process, machine, manufacture, or composition of matter.
The CAFC points out that to be a machine, manufacture, or composition of matter, it must exist in a physical or tangible form. The CAFC says that a
machine is a “concrete thing,” a manufacture is a “tangible article,” and a composition of matter is a “combination of two or more substances”. Since
the phonetic symbol system described in the claims is none of those things, the CAFC then considered whether it represented a process.</p>
<p>A “process” in terms of patentability is defined in 35 U.S.C. § 100(b), which states that a process is any “process, art or method, and includes a new
use of a known process, machine, manufacture, composition of matter, or material”. The CAFC then cites relevant case law that describes a process as
a series of acts or steps and as something that must be performed. The CAFC determines that none of the claims describing the phonetic symbol system
require an act, or step, or anything that would need to be performed. Therefore, the invention is not a process, machine, manufacture, or composition
of matter, and is not patentable. The CAFC also points out that the claims contain no additional inventive concept that may make the claims patentable.</p>
<p>At a time when patent eligibility is topic of discussion, it is important for the courts to continue to decide cases on the matter to provide clarity.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16460541&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252ffederal-circuit-addresses-patentability-in-terms-of-non-statutory-subject-matterhttp://www.ipmvs.com/filewrapper/federal-circuit-addresses-patentability-in-terms-of-non-statutory-subject-matterFri, 13 Jul 2018 05:00:00 GMTThe &quot;Sweet and Musky&quot; Smell of Play-Doh: Hasbro Awarded Non-Traditional Trademark<h3 class="hidden">Post By Nicholas Krob</h3>
<p>When you think of trademarks, what comes to mind? Is it golden arches atop a fast food restaurant? Perhaps the image of a partially-eaten apple emblazoned
on the back of a phone or computer? Or maybe it’s the scent of sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined
with the smell of a salted, wheat-based dough?</p>
<p>If one of those seems unlike the others to you, you’re not alone.</p>
<p>When discussing trademarks, most people generally think of famous symbols like the McDonald's arches or the Apple logo. These famous marks immediately
resonate in the minds of consumers, establishing a connection between the goods or services being sold and the company providing such goods or services.&nbsp;
Yet this function is not limited to symbols, as toy giant Hasbro has recently made clear.</p>
<p>Departing from the typical trademark registration, the United States Patent and Trademark Office recently granted Hasbro a trademark registration for the
<em>smell</em> of Play-Doh, as described above.&nbsp; This “non-visual scent mark,” Reg. No. 5,467,089, is one of only a handful ever granted by the
USPTO.</p>
<p>While rare, such a strange registration accords with the fundamental principles of trademark law. Trademark rights are ultimately designed to protect marks
recognized by consumers as indicative of the source of a good or service. They are a form of source-identification, providing consumers the ability
to quickly and easily associate a business with a&nbsp;product or service. This can be done in a number of different ways. While traditional means
like words and symbols clearly accomplish this purpose, so to do things like colors, sounds, designs, and even scents. Whether it’s the color blue
used by Tiffany &amp; Co. (Reg. No. 2,359,351), the shape of a Coca-Cola bottle (Reg. No. 696,147), the shape of a Porsche car (Reg. No. 2,655,378),
the sound of NBC’s chimes (Reg. No. 916,522), or, as made clear by the USPTO, the scent of Play-Doh, a mark, no matter how obscure, that serves to
indicate the source of a product in the minds of consumers is capable of trademark protection.</p>
<p>
<p><em><strong><a href="/attorneys/nicholas-j-krob" target="_blank" title="Nicholas J. Krob">Nicholas Krob</a></strong> is an Intellectual Property Attorney at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <a href="https://www.ipmvs.com/" target="_blank" title="MVS Website"><strong>www.ipmvs.co</strong><strong>m</strong></a> or contact Nick directly via email at </em><strong><em><a href="mailto:nicholas.krob@ipmvs.com" title="email Nick"><em>nicholas.krob@ipmvs.com</em></a></em></strong><em>.</em> </p>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16460780&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fthe-quot-sweet-and-musky-quot-smell-of-play-doh-hasbro-awarded-non-traditional-trademarkhttp://www.ipmvs.com/filewrapper/the-quot-sweet-and-musky-quot-smell-of-play-doh-hasbro-awarded-non-traditional-trademarkFri, 13 Jul 2018 05:00:00 GMTCRISPR Technologies: Overcoming Patentability Challenges in an Increasingly Difficult Patent Landscape<h3 class="hidden">Post By Sarah Dickhut</h3>
<p>The term “CRISPR,” which is an acronym for Clustered Regularly Interspaced Short Palindromic Repeats, generally refers to RNA-guided genome editing technology
used to engineer the genetic material of organisms with high accuracy and precision. It has wide applications in a variety of fields including genetics,
biology, agriculture, medicine, and digital data storage, to name a few. More specifically, CRISPR technology allows researchers to inexpensively,
efficiently and accurately insert, delete, knock down, or up-regulate targeted genes. This kind of targeted gene editing has entirely modified the
pace and course of gene research.</p>
<p>Since CRISPR technology was harnessed for genome editing in late 2012 to early 2013, advances in CRISPR uses and methods have radically advanced. What
was once a new frontier of research in 2013, quickly progressed into preliminary human trials in China in 2016 and human trials in the U.S. scheduled
for later this year.</p>
<p>However, the rapid progression of CRISPR-based innovations may pose a challenge to patentability. The best publicized battle over CRISPR patentability
is between the Broad Institute of MIT and the University of California (UC) Berkeley. In January of 2018, the EPO revoked one of the Broad Institute’s
patents relating to CRISPR (although the revocation was based on an invalid priority claim, rather than patentability) and in April the Federal Circuit
announced that it will hear oral arguments for the U.S. case between UC-Berkeley and the Broad Institute.</p>
<p>Independent of the battle between UC-Berkeley and the Broad Institute, other companies and innovators seeking to patent inventions involving CRISPR technologies
will likely have to contend to more difficult obviousness rejections. The obviousness rejections for CRISPR-based innovations may become more difficult
for two reasons. First, because of the rapid advancement in the field, CRISPR methods, procedures, and applications which might have otherwise been
viewed as not obvious because the innovation may not have had the same expectation of success or because the innovation might not have been foreseeable,
will be more likely viewed as another obvious variant of available CRISPR technologies. Second, it will likely be harder for Examiners to avoid hindsight
bias. In other words, it will be difficult for Examiners to view the inventiveness of a given application at the time the application was filed (as
is required for an obviousness analysis), as it may be difficult to determine what the state of the art was when the field was changing so rapidly.
Both factors will make the CRISPR landscape more challenging for innovators.</p>
<p>To avoid or at least mitigate these issues, innovators and attorneys drafting patent applications should take care to explicitly note how their CRISPR
methods and protocols differ from what was available in the field at the time. These differences should also then be clearly connected to improved
or otherwise unexpected results. A strong showing of significantly improved (<em>i.e.</em> synergistic) results or unexpected efficacy will go a long
way in circumventing obviousness challenges in CRISPR innovations.</p>
<p>
<p><em><b><a href="/attorneys/sarah-m-dickhut" title="Sarah M. Dickhut">Sarah Dickhut</a></b> is an Associate Attorney in the Chemical/Biotech Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <a href="http://www.ipmvs.com/"><strong>www.ipmvs.co</strong><strong>m</strong></a> or contact Sarah directly via email at </em><strong><em><a href="mailto:sarah.dickhut@ipmvs.com"><em>sarah.dickhut@ipmvs.com</em></a></em></strong><em>.</em> </p>
</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16452176&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fcrispr-technologies-overcoming-patentability-challenges-in-an-increasingly-difficult-patent-landscaphttp://www.ipmvs.com/filewrapper/crispr-technologies-overcoming-patentability-challenges-in-an-increasingly-difficult-patent-landscapThu, 05 Jul 2018 05:00:00 GMTPatent Owners can Recover for Lost Foreign Profits<h3 class="hidden">Post By Blog Staff</h3>
<p>On June 22, 2018, in <em>WesternGeco, LLC v. ION Geophysical Corporation</em>, the Supreme Court held that patent owners can recover for lost foreign profits
based on 35 U.S.C. § 271(f)(2). The statute states that “[W]however without authority supplies or causes to be supplied in or from the United States
any component of a patented invention ... intending that such component will be combined outside of the United States in a manner that would infringe
the patent if such combination occurred within the United States, shall be liable as an infringer.”</p>
<p>WesternGeco, LLC owns four patents related to surveying the ocean floor. In 2007, ION Geophysical Corporation began selling components for an ocean floor
surveying system. The components were manufactured in the United States and then shipped overseas where they were assembled to produce a system indistinguishable
from WesterGeco’s system.</p>
<p>WesternGeco sued under 35 U.S.C. § 271(f)(1) and (f)(2), and the trial court found that ION had infringed and awarded WesternGeco damages for lost profits.
The Federal Circuit reversed the award of lost profits, and the Supreme Court vacated and remanded the decision. The Federal Circuit then reinstated
its holding of no damages for loss of profit based on extraterritoriality. The Supreme Court now reversed that decision holding that patent owners
can recover for lost foreign profits.</p>
<p>The Court addressed the presumption against extraterritoriality that federal statutes should only apply within the United States. The Court identified
a two-step test when considering extraterritoriality. The first step is to determine “whether the presumption against extraterritoriality has been
rebutted.” The Court exercised its discretion and ignored this step because pursing it may have created extraterritoriality questions for other statutes.
The second step is to determine “whether the case involves a domestic application of the statute.” Courts consider the “the statute’s focus” when answering
step 2.</p>
<p>The Court considered 35 U.S.C § 284, which regulates damages related to patent infringement, and § 271(f)(2). Based on the § 271(f)(2)’s language regulating
the supply of components “in or from the United States”, the Court concluded that the focus of these two statutes in conjunction is the domestic act
of exporting components of patented inventions from the United States. Therefore, the Court held that the award of damages for lost profits was a domestic
application of § 284 and reversed the Federal Circuit’s decision to not allow the damages. This decision opens the door for patent owners being able
to recover for lost foreign profits.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16450068&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fpatent-owners-can-recover-for-lost-foreign-profitshttp://www.ipmvs.com/filewrapper/patent-owners-can-recover-for-lost-foreign-profitsTue, 03 Jul 2018 05:00:00 GMTInter Partes Review Proceedings (IPRs) Survive First Constitutional Challenge, But Court Opinion Opens Door to Further Challenges<h3 class="hidden">Post By Jonathan L. Kennedy</h3>
<p>On April 24, 2018, I had posted regarding the U.S. Supreme Court being held in a 7-2 decision (Justice Gorsuch and Chief Justice Roberts dissenting),<em>Oil States Energy Servs. v. Greene’s Energy Group, LLC</em>,
that the Inter Partes Review proceedings, commonly referred to as IPRs, do not violate Article III or the Seventh Amendment of the U.S. Constitution.
The Court was deciding two primary constitutional challenges: (1) whether IPRs violate Article III of the constitution by assigning a task intended
for U.S. District Courts to an administrative agency (i.e., the Patent Office); and (2) whether IPRs violate the Seventh Amendment by having a controversy
decided without the opportunity for a jury trial. The Court emphasized the narrowness of the Constitutional issues before it and was explicit that
its decision did not address other potential Constitutional challenges.</p>
<p>The case arose when Oil States Energy Services sued Greene’s Energy Group for infringement of U.S. Patent Number 6,179,053 (“the ‘053 Patent”) directed
to an apparatus and method for protecting well-head equipment used in hydraulic fracturing. Greene’s Energy responded by challenging the validity of
the ‘053 patent. Near the end of discovery in the patent infringement lawsuit, Greene’s Energy petitioned the USPTO’s Patent Trial and Appeal Board
(“PTAB”) to institute an IPR proceeding. The PTAB instituted the proceeding with respect to two of the claims in the ‘053 Patent. The civil litigation
continued in parallel with the IPR proceeding. The district court issued a claim construction order that precluded Greene’s Energy’s arguments regarding
invalidity of the claims in the civil litigation. The PTAB, however, found that the claims lacked novelty in view of the prior art cited by Greene’s
Energy in the IPR proceeding and held the ‘053 patent’s claims were invalid for lack of novelty.</p>
<p>Oil States appealed the PTAB’s decision to the Federal Circuit and ultimately the U.S. Supreme Court.&nbsp; One of the grounds raised by Oil States was
whether the IPR proceedings violate the Constitution under Article III by assigning a task intended for U.S. District Courts to an administrative agency
(i.e., the Patent Office) and the Seventh Amendment by having a controversy decided without the opportunity for a jury trial. The Supreme Court granted
certiorari on these Constitutional challenges to the IPR proceedings.</p>
<p>The arguments before the Court and the differing opinions reflected by the Court’s majority and dissent demonstrate a philosophical disagreement as to
the nature of a patent right. Oil States argued, and the dissent agreed, that an issued patent is a personal right, i.e., personal property. Specifically,
the dissent stated, “an issued patent [is] a personal right – no less than a home or farm – that the federal government could revoke only with the
concurrence of independent judges”. Oil States’ arguments before the Court were consistent with this – arguing that a patent is the “private property
of the patentee”. The majority agreed that a patent is a property right, but with the caveat that “Patents convey only a specific form of property
right – a public franchise”. The majority relied on the legal distinction between public and private rights walking through cases distinguishing private
and public rights.</p>
<p>Supporting its conclusion that a patent right is a public right, the majority noted that the decision to grant a patent is necessarily a matter involving
public rights as it is a public franchise and provides the patentee the right to exclude the public from making, using, selling, and offering for sale
the patented invention. The Court also noted that granting patents is one of the constitutional rights carried out by the executive and legislative
branches. This too is indicative of the public-rights doctrine as the granting of patents is a matter that occurs between the government and others.
Quoting the Court’s earlier decision,<em>In re Cuozzo</em>, the majority reiterated that IPRs are “a second look at an earlier administrative” action,
i.e., grant of a patent. The only difference between IPR and examination is that the former occurs <em>after</em> issuance. The Court held this is
a distinction without a difference. Ultimately, the majority held that patents and IPRs fall “squarely within the public-rights doctrine”.</p>
<p>The public rights doctrine provides Congress with “wide latitude to assign adjudication of public rights to entities other than Article III courts.” Thus,
by holding that patents and the IPR proceedings fall within the public rights doctrine, Congress has the authority to assign review, amendment, and
cancellation of patents to the USPTO without violating Article III of the Constitution. Moreover, the Court held that Congress can properly assign
adjudication of patent validity to the USPTO, and thus the Seventh Amendment is also not violated.</p>
<p>The dissent, authored by Justice Gorsuch, countered the majority’s holding that issued patents can be invalidated through non-judicial proceedings. They
emphasized the importance of an independent judiciary to hear cases and controversies between parties, and particularly disputes regarding personal
rights. Supporting this argument, the dissent provides a detailed discussion of the history of pre-Revolution colonial judges and English Privy Council
to emphasize the importance of judicial independence. The dissent contends that IPRs are a retreat from independent judiciary, which is provided for
in Article III of the Constitution. It also cautions the judiciary from “intrusions by the other branches” concluding that that “enforcing Article
III isn’t about protecting judicial authority”, but rather “about ensuring the people today and tomorrow enjoy no fewer rights against governmental
intrusion than those who came before”.</p>
<p>The majority responded to the dissent noting that historically the English Privy Council had the authority to cancel patents. It was against this backdrop
that the Patent Clause and Article III of the Constitution were written. The Court noted that neither the parties nor the dissent cited any authority
indicating the framers were unaware of this practice or that they made an effort to exclude this practice. The majority was clear though that this
decision was specific only to the Constitutional issues raised by Oil States, i.e., Article III and the Seventh Amendment. The Court was explicit that
Oil States did not challenge (1) the retroactive application of IPRs to patents issued prior to its enactment, (2) IPRs under the Due Process Clause,
or (3) Takings Clause. Thus, these issues remain open for other parties to challenge and for the Court to take up at a later date.</p>
<p>The previous post I wrote can be found <u><b><a href="https://www.filewrapper.com/filewrapper/inter-partes-review-proceedings-iprs-are-constitutional-per-u-s-supreme-court?filewrapper=true">here</a></b></u>.
<br />
</p>
<p><strong><em><a title="Jonathan Kennedy" href="/attorneys/jonathan-l-kennedy">Jonathan L. Kennedy</a></em></strong><em>,</em><em>&nbsp;is a Patent Attorney in the </em><b><em><a title="Biotechnology Patents page" href="https://www.ipmvs.com/services/biotechnology-patents">Biotechnology &amp; Chemical Practice Group</a></em></b><em>&nbsp;at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit</em><strong><em><a href="http://www.ipmvs.com/"> www.ipmvs.com&nbsp;</a></em></strong><em>or contact Jonathan directly via email at&nbsp;</em><strong><em><a href="mailto:jonathan.kennedy@ipmvs.com">jonathan.kennedy@ipmvs.com</a></em></strong><em>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16436768&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252finter-partes-review-proceedings-iprs-survive-first-constitutional-challenge-but-court-opinion-opens-http://www.ipmvs.com/filewrapper/inter-partes-review-proceedings-iprs-survive-first-constitutional-challenge-but-court-opinion-opens-Mon, 02 Jul 2018 05:00:00 GMTCopyright Office Proposes New Fee Schedule<h3 class="hidden">Post By Brandon Clark</h3>
<p>The Copyright Office recently announced a new proposed fee schedule that would increase the majority of fees associated with filings at the Copyright Office.
The proposal comes after an extensive assessment performed by consultants Booz Allen Hamilton. The proposed fee increase would help the Copyright Office
offset regular costs, while also providing the Copyright Office additional resources to modernize its processes and systems.</p>
<p>The Copyright Office is attempting to strike a balance between ensuring that services are accessible and priced to achieve maximum usage, while still recovering
enough of the Office’s costs. It’s important to note that the Copyright Office has never recovered its full costs from user fees. Instead, the Office
has traditionally recovered approximately 60% of its costs through fees; the remainder is provided through appropriated dollars from the U.S. treasury.
The proposed fee increase would keep this percentage consistent.</p>
<p>While the majority of fees would slightly increase, I’ve drawn attention to a few of the more frequently encountered fees below:</p>
<ul>
<li>Currently, copyright application fees range from $35 -$85 with the Standard Application fee being $55. The proposed fees would range from $55-$125
with the Standard Application fee being $75.</li>
<li>Special handling in the case of pending or prospective litigation, customs matters, or contract deadlines that necessitate the expedited registration
are currently $800 per application. The Copyright Office proposal would increase the fees for expedited processing to $1000 per application.</li>
<li>Copyright transfer/assignment fees are currently $105 while the proposed transfer/assignment fee would be $125.</li>
</ul>
<p>The last comprehensive fee increase came in May of 2014, and if approved, the new fee schedule would likely go into effect in early 2019.</p>
<p>The Copyright Office is providing an opportunity to the public to comment on the proposed changes before it submits the fee schedule to Congress and comments
can be submitted at the following link: <a href="https://www.copyright.gov/policy/feestudy2018" title="public comments to Congress">https://www.copyright.gov/policy/feestudy2018</a>.
Written comments must be received by September 21, 2018.</p>
<p><em><b><a href="/attorneys/brandon-w-clark" title="Brandon W. Clark">Brandon W. Clark</a></b> is the Chair of the Copyright, Entertainment &amp; Media Law Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit <u><a href="http://www.ipmvs.com">www.ipmvs.com</a></u> or contact Brandon directly via email at <u><a href="mailto:brandon.clark@ipmvs.com" title="email Brandon">brandon.clark@ipmvs.com</a></u>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16430621&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fcopyright-office-proposes-new-fee-schedulehttp://www.ipmvs.com/filewrapper/copyright-office-proposes-new-fee-scheduleThu, 28 Jun 2018 05:00:00 GMTPatent Rights are NOT Monopoly Rights<h3 class="hidden">Post By Luke T. Mohrhauser</h3>
<p>There has been a long believed and conveyed statement that patent rights provide a "legal monopoly". While this may be a simple way to explain the rights
held by one issued patent, this is simply not true. Monopolies, at their core, attempt to control a market or an aspect of a market. Patents provide
protection and can offer incentives for inventors to disclose their inventions publicly, which is an attempt to make products, methods, compositions,
etc., better.</p>
<p>To better understand the difference, one should know that patents are an exclusionary right. The owner of a patent has the right to <strong><em>exclude</em></strong> all others from making, using, selling, offering to sell, or importing into the United States any patented invention covered by an issued patent. This
is defined by the claims of a patent, which set out the boundaries of the patented invention. There is no "right" for a patent owner to make the product
or even be guaranteed that the public will want their patented invention.</p>
<p>Monopolies need a market to exist, as they are an improper control or constraint of a market, in an attempt to control the pricing of an aspect of the
market. This generally requires someone to have almost absolute control of the market, or to agree with others to combine market presences to control
the market. Note, however, that there needs to be a market that is being manipulated in order for there to be a monopoly. The control is often in the
form of a commodity, which can include resources from natural resources to artistic or athletic resources in order to control pricing.</p>
<p>While it is technically possible for a person or a company to be issued many patents in such a manner that they (1) create a market; and (2) are able to
exert control based upon the issued patents, this is rather unlikely. The creation of a market via patents is very rare, and can likely be limited
to examples such as electricity, flight, or the like, which include generational and life-changing technologies. Even then, because of the public nature
of patents and patent applications, the public is able to see what is being excluded with the issued patents and are encouraged to use this information
to expand upon and/or design around the patents in order to improve the technology contained in the patents. Thus, it is likely the control would be
fleeting.</p>
<p>In addition, it should be noted that antitrust laws and attempts to bust monopolies did not even arise until almost 100 years after patents began being
issued in the United States!</p>
<p>So, what does all of this mean? Patents should be thought of as individual exclusionary rights that allow a patent owner to exclude others from making,
using, selling, offering to sell, or importing into the United States any patented invention covered by an issued patent. Patents should not be thought
of as an automatic way to make money or to control a market or even an aspect of a market. Patents can be a great tool to limit what competitors can
do in terms of offering competing products and/or services. Patents can also create other market advantages unrelated to the price control of monopolies.
For example, if a patent does cover a new product or even an improvement of a product, the patent can give the owner a head start to be the only one
to offer such a product. They can exclude others from offering the same. This head start can give the owner market presence and allow them to build
name recognition. That said, if a competing product that designs around the issued patent comes to market, it will hopefully be less successful, due
to the association of the first product already being in the market. Building name recognition will associate consumers and customers to your business,
and with continued innovation, hopefully create loyalty.</p>
<p>Therefore, the next time you hear someone say, or read something that states, "patents are legal monopolies", think about how incorrect that statement
is, and how monopolies are restrictions or constraints on markets, while patents are incentives in the form of exclusionary rights to encourage innovation.
When used correctly, patents provide possibilities for patent owners to obtain a loyal consumer/customer base, encourage growth, and (hopefully) continued
innovation, which is better for all.</p>
<p><em><a title="Luke T. Mohrhauser" href="attorneys/luke-t-mohrhauser"><strong>Luke T. Mohrhauser</strong></a> is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit<strong><a href="http://www.ipmvs.com/"> www.ipmvs.com</a></strong> or contact Luke directly via email at <strong><a href="mailto:luke.mohrhauser@ipmvs.com">luke.mohrhauser@ipmvs.com</a></strong>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16426979&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fpatent-rights-are-not-monopoly-rightshttp://www.ipmvs.com/filewrapper/patent-rights-are-not-monopoly-rightsMon, 25 Jun 2018 05:00:00 GMTProtecting Your Nanotechnology Inventions - Part 1: Defining Your Space<h3 class="hidden">Post By Jonathan L. Kennedy</h3>
<p>In a recent <u><b><a href="https://www.filewrapper.com/filewrapper/just-because-it-s-nanoscale-doesn-t-mean-it-s-not-a-big-deal?filewrapper=true" target="_blank" title=" Just Because It’s Nanoscale, Doesn’t Mean It’s Not a Big Deal">post</a></b></u>,
I discussed the increasing focus on nanotechnology research including the growing number of patents issued and government funding in nanotechnology
research. Obtaining the strongest and broadest protection for your nanotechnology should be a focus of any research and intellectual property (IP)
strategy. There are things that can be done during research to support stronger and broader protection for your technology. Over a series of blog posts,
I will address different considerations that you can implement to support your IP strategy. This week, the focus is on the broader topic of defining
your space.</p>
<p><strong>Defining Your Space</strong>
</p>
<p>There are multiple ways that you can define your space. Regardless of whether your plan is to offer products and/or services, license your IP, or sell
your IP to another company, defining your space is a critical part of monetizing your technology. Having a clearly defined understanding of your technical
and commercial goals, how those fit in the competitive market, and how you can carve out a protected portion of the market, will provide a framework
for your intellectual property strategy. It can help make informed decisions as to patenting versus keeping trade secrets. It can influence the breadth
of your patent claims and patent disclosure.</p>
<p>First, you should be able to articulate your intended market segment. Is your endgame selling end-products, selling a component used in an end-product,
manufacturing for others, or selling your technology and its associated IP rights to another company?</p>
<p>Second, consider not only what your current and expected future products and services are, but also the broader uses of your technology. How can your innovation
be used beyond what your end goal is? If you are interested in making a component useful in LED technology, can it also be useful in other electronics?
Can it be useful outside of electronics?</p>
<p>Third, you should consider what part of the competitive landscape you can carve out based on your innovation. How can competitors seek to work-around your
technology? And how can you protect from those work-arounds? Can you protect not just your product, but commercial methods that use your product?</p>
<p>With the answers to these questions in mind, the next blog post in this series will focus on Defining Your Nanotechnology Invention.</p>
<p>
<p><em><strong><a href="/attorneys/jonathan-l-kennedy" title="Jonathan Kennedy">Jonathan Kennedy</a></strong> is an Intellectual Property Attorney in the Biotechnology &amp; Chemical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <a href="http://www.ipmvs.com/"><strong>www.ipmvs.co</strong><strong>m</strong></a> or contact Jonathan directly via email at </em><strong><em><a href="mailto:jonathan.kennedy@ipmvs.com"><em>jonathan.kennedy@ipmvs.com</em></a></em></strong><em>.</em> </p>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16407650&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fprotecting-your-nanotechnology-inventions-part-1-defining-your-spacehttp://www.ipmvs.com/filewrapper/protecting-your-nanotechnology-inventions-part-1-defining-your-spaceThu, 21 Jun 2018 05:00:00 GMTFederal Circuit Defines “manufactured” Pursuant to 28 U.S.C. § 1498<h3 class="hidden">Post By Blog Staff</h3>
<p>In <em>FastShip, LLC v. United States</em>, decided on June 5, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) defined the term
“manufactured” pursuant to 28 U.S.C. § 1498. The statute states that a patent owner can sue the U.S. government for infringement when “an invention
[covered by a U.S. patent] is used or manufactured by or for the United States without proper license . . . or lawful right to use or manufacture .
. . .”. FastShip sued the U.S. government for patent infringement in the United States Court of Federal Claims pursuant to § 1498. The government moved
for summary judgment arguing that the government had not “manufactured” the product before the expiration of the patent. The Court of Federal Claims
granted the government’s motion and the CAFC affirmed that decision.</p>
<p>The patents in question are in regard to a ship design that enables ships of a certain size, carrying cargo of a certain weight, to move at speeds greater
than they could without using the designs described in the patents. The patents in question expired on May 18, 2010. The U.S. Navy contracted private
companies to construct a ship built using the patents, which began construction in July of 2009, but was not erected until September of 2010.</p>
<p>In its opinion, the CAFC stated that no controlling cases existed on the issue of the definition of “manufactured” pursuant to § 1498. Therefore, based
on its plain meaning, the CAFC concluded that “a product is ‘manufactured’ when it is made to include each limitation of the thing invented and is
therefore suitable for use”.</p>
<p>The CAFC concluded that no ships were manufactured before expiration of the patent, and therefore affirmed the decision to grant the government’s motion
for summary judgment. The CAFC concluded that even though construction had begun, the ship did not include each limitation of the claims and was not
suitable for use before the patents expired. The ship lacked elements of the design described in the patents and construction was not far enough along
before the patents expired to enable the ship to float.</p>
<p>The CAFC, pursuant to § 1498, concluded that for a product to be considered manufactured, it must include each limitation from the claims of the invention
and must be suitable for use.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16406722&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252ffederal-circuit-defines-manufactured-pursuant-to-28-u-s-c-1498http://www.ipmvs.com/filewrapper/federal-circuit-defines-manufactured-pursuant-to-28-u-s-c-1498Wed, 20 Jun 2018 05:00:00 GMTA Commentary on Women in the Profession and MVS<h3 class="hidden">Post By Heidi S. Nebel</h3>
<p>A recent article appeared in the Lexis Nexis news piece “Law360”, describing the dismal results of their annual “Glass Ceiling Report”. The article concluded
that there had been “limited progress” for female attorneys in a male-dominated profession. Women have represented over 40% of law school students
for decades, according to the American Bar Association, yet, only one in five equity partners (in over 300 firms surveyed) were women. For the practice
of Intellectual Property patent practitioners, the numbers are staggeringly worse. With the requirement of a science or engineering degree in addition
to a law degree, the field is male dominated times two.&nbsp;</p>
<p>I am gratified to report that as a woman equity partner at MVS for more than 20 years, our firm stands out in stark contrast to this norm. For example,
this year with the addition of <u><b><a href="/attorneys/cassie-j-edgar" target="_blank" title="Cassie J. Edgar">Cassie J. Edgar</a></b></u> as a lateral
partner, one half of the MVS partners (PLC member attorneys) are women!&nbsp;&nbsp;</p>
<p>The firm legacy of including women began as far back as 1985, where the first female patent attorney in the state of Iowa, <u><b><a href="/attorneys/patricia-a-sweeney" target="_blank" title="Pat A. Sweeney">Pat A. Sweeney</a></b></u>,
joined the firm. Pat left the firm and went to Pioneer DuPont where she rose to Chief IP Counsel and then went into private practice for 20 years.
She re-joined MVS “Of Counsel” in 2016.&nbsp;</p>
<p>In my own experience, my law school class of 1992 was the first in school history to graduate more women than men. I became an equity partner and have
served on the management committee of MVS for more than 15 years and have served as managing member of the committee for more than 10 years.&nbsp;&nbsp;</p>
<p>The women of MVS continue to lead by example as we participate in committees and organizations to help promote women entrepreneurs, women business owners,
and women inventors. We also support Science Technology Engineering and Math initiatives for young girls at elementary and middle schools.&nbsp;</p>
<p>There is much work to do, but I am proud be a part of MVS and its legacy as a leader in gender equality.&nbsp;</p>
<p><em><strong><a title="Heidi S. Nebel" href="attorneys/heidi-s-nebel" target="_blank">Heidi S. Nebel</a></strong> is the Chair of the&nbsp;<a title="Biotechnology &amp; Chemical Practice Group" href="services/biotechnology-patents" target="_blank">Biotechnology &amp; Chemical Practice Group</a> at MVS. She serves as the Managing Member of the Firm and has been assisting clients with intellectual property matters for over 25 years.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16405140&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fa-commentary-on-women-in-the-profession-and-mvshttp://www.ipmvs.com/filewrapper/a-commentary-on-women-in-the-profession-and-mvsTue, 19 Jun 2018 05:00:00 GMTPTAB to Consider When Conference Materials are Prior Art<h3 class="hidden">Post By Blog Staff</h3>
<p>In a consolidated appeal from two related Patent Trial and Appeals Board (“PTAB”) decisions, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed-in-part
and vacated-in-part the PTAB’s findings. The CAFC affirmed the PTAB’s conclusion that challenged claims would not have been obvious over two specific
references. However, the CAFC vacated the PTAB’s determination that certain other references were not prior art because the PTAB did not fully consider
all the factors for determining whether those publications were publicly accessible.</p>
<p>Surgical systems manufacturer Medtronic was sued for patent infringement. Medtronic then petitioned for <em>inter partes</em> review proceedings, which
the PTAB instituted, for all claims in the two patents at issue. Medtronic submitted prior art references to assert grounds of obviousness against
the claims, but the PTAB found that certain materials, although presented at different industry meetings and conferences, were not publicly accessible
and therefore were not “printed publications” in accordance with 35 U.S.C. §102. The PTAB thus refused to consider these materials as prior art and
found that a person of ordinary skill would not have found the patent claims obvious over the valid prior art.</p>
<p>The CAFC directs the PTAB to consider on remand the question of whether the distribution of these materials to groups of people at conferences were sufficient
to render them as printed publications under §102(b). The CAFC describes certain factors relevant to making such a judgment including the size and
nature of the meetings, whether they are open to anyone interested in the subject matter, whether the materials were freely distributed, whether there
was an expectation of confidentiality between the distributor and the recipients of the materials, and the expertise of the target audience.</p>
<p>On remand, the PTAB is to determine whether these publications were publicly accessible for prior art purposes and if so, whether they render the challenged
claims obvious.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16391184&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fptab-to-consider-when-conference-materials-are-prior-arthttp://www.ipmvs.com/filewrapper/ptab-to-consider-when-conference-materials-are-prior-artMon, 11 Jun 2018 05:00:00 GMTNational Bioengineered Food Disclosure Standard rules publish May 4: Ties to patent protection and gene editing<h3 class="hidden">Post By Cassie J Edgar</h3>
<p><strong>National Bioengineered Food Disclosure Standard rules publish May 4: Ties to patent protection and gene editing</strong>
</p>
<p>&nbsp;</p>
<p>In 2016 Congress passed an amendment to the Agricultural Marketing Act of 1946 to establish a national bioengineered food disclosure standard. This law
was an important milestone in establishing transparency for consumers, ensuring labeling certainty for innovators developing new products, and preventing
proliferation of independent state-by-state disclosure laws which would make food packaging unworkable from a compliance perspective. Congress specified
that implementing rules must be finalized by July 29, 2018 – a rapidly approaching deadline.</p>
<p>USDA will post their proposed rule to the Federal Register on May 4, 2018 and will be seeking public comments for 60 days thereafter.</p>
<p>The question of what will be labeled begins with specifying that the product must be “food” and must be “bioengineered”.</p>
<p><strong>&nbsp;</strong>
</p>
<p><strong>What is food?</strong>
</p>
<p>In the National Bioengineered Food Disclosure Standard, Food is defined as: A food [(1) articles used for food or drink for man or other animals, (2) chewing
gum, and (3) articles used for components of any such article.” (per 21 U.S.C. 321(f))] that is intended for human consumption. (7 U.S.C. 1639(2).)</p>
<p>So, yes to that wine from Sonoma County, a green smoothie, and even the beloved frosted brown sugar cinnamon Pop-Tart. No to <a href="https://www.filewrapper.com/filewrapper/patent-covering-methods-of-advanced-genomic-selection-from-guinea-pigs-to-corn-survives-opposition-i?filewrapper=true">KeyGene’s patented guinea pig</a>,
at least in the States.</p>
<p>&nbsp;</p>
<p><strong>What is “bioengineering"?</strong>
</p>
<p>The amended Act defines “bioengineering” as referring to a food “(A) that contains genetic material that has been modified through in vitro recombinant
deoxyribonucleic acid (DNA) techniques; and (B) for which the modification could not otherwise be obtained through conventional breeding or found in
nature.” 7 U.S.C. 1639(1).</p>
<p>Details on each of these components of the definition are to be determined, and the USDA is seeking public comment on this definition including whether,
for example, highly refined products such as sugars and oils would contain any modified genetic material.</p>
<p>Interestingly, USDA anticipates that in applying the “found in nature” component of the definition of “bioengineered”, they will consider whether a modification
has intellectual property protection and was able to meet the patentability criteria of 35 U.S.C. 101, which excludes products of nature from patent
protection.</p>
<p>Based on recent U.S. Supreme Court decisions, the U.S. Patent and Trademark Office issued updated guidance to examiners outlining the criteria to determine
when inventions are products of nature are therefore not patentable subject matter under 35 U.S.C. 101. <em>See </em>for example<em>, </em><a href="https://www.uspto.gov/sites/default/files/documents/training%20-%202014%20interim%20guidance.pdf">U.S. Patent and Trademark Office’s 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 FR 74618, 74622-24</a> (Dec. 16, 2014), and the more recent Memorandum from Deputy Commissioner for Patent Examination Policy to Patent Examining Corps titled “Formulating
a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection” (May 4, 2016) (<a href="https://www.uspto.gov/sites/default/files/documents/ieg-may-2016-memo.pdf">https://www.uspto.gov/sites/default/files/documents/ieg-may-2016-memo.pdf</a>).</p>
<p>USDA states that “AMS believes that there are similarities in how a product of nature is interpreted for purposes of patent eligibility and how a modification
could be found in nature, for purposes of determining whether a modification is bioengineered” (<a href="https://www.federalregister.gov/documents/2018/05/04/2018-09389/national-bioengineered-food-disclosure-standard">https://www.federalregister.gov/documents/2018/05/04/2018-09389/national-bioengineered-food-disclosure-standard</a>).</p>
<p>This is another example illustrating the <a href="https://www.ipmvs.com/services/regulatory-law">importance of tying intellectual property and regulatory strategies together</a>,
as IP and regulatory agencies review and consider each other’s regulations and product-specific documents during the commercialization lifecycle from
discovery through post-launch.</p>
<p><strong>&nbsp;</strong>
</p>
<p><strong>Where does that leave products of gene editing? </strong>
</p>
<p>For products produced by site-directed mutagenesis such as CRISPRs where technology is simply used to “text edit” an existing gene to change a “typo”,
there is no recombinant DNA technique such as a plasmid insertion involved. Therefore based on the literal text of the definition, this would not qualify
as “bioengineering” as outlined in the Act.</p>
<p>However, as the definition undergoes public comment and the final rules are drafted and implemented, it will become clear whether implementing guidelines
expressly exclude products of gene editing or if it will be considered on a case by case basis dependent on the technology as implemented. Issues include
whether “recombinant DNA techniques” may include the use of an HDR template and/or guide RNA, and whether products who have met the threshold of patentability
under 35 USC 101 by arguing they are not found in nature, even though similar products exist in nature, end up as “bioengineered” in the final rules.</p>
<p>&nbsp;</p>
<p><strong>If gene edited products are indeed expressly excluded, does this mean that each state can draft and implement separate legislation regarding labeling for gene edited food products?</strong>
</p>
<p>This topic was addressed through a section directed to federal preemption, mentioned without discussion in the published rule, noting simply that “Subtitle
F addresses Federal preemption of State and local genetic engineering labeling requirements”. Subtitle F, below, uses the phrase “genetic engineering”
distinct and presumably broader than the strictly defined “bioengineering”, but final interpretation is yet to be determined (7 U.S.C. 1639i).</p>
<p style="padding-left: 30px;">FEDERAL PREEMPTION.&mdash;No State or a political subdivision of a State may directly or indirectly establish under any authority or continue in effect
as to any food or seed in interstate commerce any requirement relating to the labeling of whether a food (including food served in a restaurant or
similar establishment) or seed is genetically engineered (which shall include such other similar terms as determined by the Secretary of Agriculture)
or was developed or produced using genetic engineering, including any requirement for claims that a food or seed is or contains an ingredient that
was developed or produced using genetic engineering.</p>
<p>Further complicating factors include the tie in to the Organic Foods Production Act of 1990 (7 U.S.C. 6501 et seq.), international labeling laws, requirements
for importers, and situations where FDA may have voluntary or mandatory labeling requirements under the Federal Food, Drug, and Cosmetic Act (FFDCA).</p>
<p>&nbsp;</p>
<p><strong>What will the label look like?</strong> </p>
<p>The draft rule proposes options for use of logo and information placement depending on product type and package size, utilizing symbols that display
“BE” (bioengineered). There is also allowance for use of an electronic link such as a QR code as proposed by <a href="https://www.gmaonline.org/issues-policy/health-nutrition/smartlabeltm-consumer-information-transparency-initiative/">GMA</a>,
if accompanied by a telephone number.</p>
<p>&nbsp;</p>
<p><strong>What happens next?</strong> </p>
<p>These next few months are an opportunity to provide public comment, advocate with members of Congress, and consider implications on both IP and regulatory
strategy for relevant products in development. Stay tuned for further details during the public comment period.</p>
<p>&nbsp;</p>
<p><strong><u><a href="https://www.ipmvs.com/attorneys/cassie-j-edgar">Cassie J. Edgar</a></u></strong>, Patent Attorney and Chair of the Regulatory &amp;
Product Development Law practice group, advises clients in product life-cycle management from discovery through post-product launch, including
intellectual property, crisis management, compliance, stewardship, regulatory data package generation, lobbying, and obtaining regulatory permits
and matters with USDA, FDA, EPA, and FTC. She plans to stock up on&nbsp;her dearly beloved's frosted brown sugar cinnamon and perhaps frosted strawberry
Pop-Tarts, merely in the name of label research. No guinea pigs were harmed in the production of this post. <em>For additional information, please visit</em> <a href="https://www.ipmvs.com/services/regulatory-law">MVS</a> <em>or contact Cassie directly via email at<a href="mailto:cassie.edgar@ipmvs.com"> cassie.edgar@ipmvs.com</a>.</em> </p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16304271&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fnational-bioengineered-food-disclosure-standard-rules-publish-may-4-ties-to-patent-protection-and-gehttp://www.ipmvs.com/filewrapper/national-bioengineered-food-disclosure-standard-rules-publish-may-4-ties-to-patent-protection-and-geThu, 03 May 2018 05:00:00 GMTWorld Intellectual Property Day 2018<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p>On World Intellectual Property day (April 26), President Trump proclaimed his administration’s goal of improving intellectual property rights in the United
States. This is similar to the pledge earlier this month by the new director of the U.S. Patent and Trademark Office, <a href="https://www.law360.com/agencies/u-s-patent-and-trademark-office">Andrei Iancu</a>,
in his recent speech to the U.S. Chamber of Commerce to strengthen our patent system. Both the President and the Director acknowledged that investments
in innovations depend on a reliable and predictable patent system, which can lead to new products and technologies, new and expanding industries, and
economic growth.</p>
<p>WIPO (World Intellectual Property Organization) announced that World Intellectual Property Day 2018 was dedicated to women whose creativity have changed
the world.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16286162&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fworld-intellectual-property-day-2018http://www.ipmvs.com/filewrapper/world-intellectual-property-day-2018Fri, 27 Apr 2018 05:00:00 GMTInter Partes Review Proceedings (IPRs) Do Not Violate Article III of the Constitution per U.S. Supreme Court<h3 class="hidden">Post By Jonathan L. Kennedy</h3>
<p>The U.S. Supreme held in a 7-2 decision (Justice Gorsuch and Chief Justice Roberts dissenting), <em><a href="https://www.supremecourt.gov/opinions/17pdf/16-712_87ad.pdf">Oil States Energy Servs. V. Greene’s Energy Group, LLC</a></em>,
that the Inter Partes Review proceedings, commonly referred to as IPRs,&nbsp;do not violate Article III or the Seventh Amendment.</p>
<p>The Court was deciding two primary constitutional challenges: (1) whether IPRs violate Article III of the constitution by assigning a task intended for
U.S. District Courts to an administrative agency (i.e., the Patent Office); and (2) whether IPRs violate the Seventh Amendment by having a matter tried
outside of the U.S. Courts.&nbsp;&nbsp;</p>
<p>The majority held that the grant of a patent falls within the public-rights doctrine.&nbsp; Public and private rights are distinguished historically in
legal precedent. The Court held that patents and “[i]nter partes review fall[] squarely within the public-rights doctrine.”&nbsp; Elaborating on this,
the Court noted that the decision to grant a patent is a matter involving public rights as it is a public franchise and provides the patentee the right
to exclude the public from making, using, selling, and offering for sale the patented invention. &nbsp;The Court also noted that granting patents is
one of the constitutional rights carried out by the executive and legislative branches. This too is indicative of the public-rights doctrine as the
granting of patents is a matter that occurs between the government and others. Quoting the Court’s earlier decision in <em>In re Cuozzo</em>, the majority
reiterated that IPRs are “a second look at an earlier administrative” action, i.e., grant of a patent.&nbsp; The only difference between IPR and examination
is that the former occurs <em>after</em> issuance. The Court held that this is a distinction without a difference.</p>
<p>The public-rights doctrine provides Congress with “wide latitude to assign adjudication of public rights to entities other than Article III courts.”&nbsp;
Thus, by holding that patents and the IPR proceedings fall within the public rights doctrine, Congress has the authority to assign review, amendment,
and cancellation of patents to the USPTO without violating Article III of the Constitution.&nbsp; Moreover, the Court also held that since Congress
can properly assign adjudication of patent validity to the USPTO, the Seventh Amendment is&nbsp;not violated.</p>
<p>Justice Gorsuch wrote a dissent, joined by Chief Justice Roberts.&nbsp; The focus of the dissent is on the importance of independent judicial review of
cases and controversies, which is laid out in Article III of the Constitution, and protecting the judiciary from “intrusions by the other branches.”
The dissent provides a detailed historical review of Courts and the importance of independent judicial review over controversies between parties, contending
that controversies between parties are to be considered by Article III courts.</p>
<p>The Court’s full opinion can be accessed <u><b><a href="https://www.supremecourt.gov/opinions/17pdf/16-712_87ad.pdf">here</a></b></u>. A more detailed
discussion of this case is provided in a subsequent article available <u><b><a href="https://www.filewrapper.com/filewrapper/inter-partes-review-proceedings-iprs-survive-first-constitutional-challenge-but-court-opinion-opens-?filewrapper=true">here</a></b></u>.
<br />
</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16281373&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252finter-partes-review-proceedings-iprs-are-constitutional-per-u-s-supreme-courthttp://www.ipmvs.com/filewrapper/inter-partes-review-proceedings-iprs-are-constitutional-per-u-s-supreme-courtTue, 24 Apr 2018 05:00:00 GMTPatent Office Director Pledges Improvements to U.S. Patents<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p>In a speech to the US Chamber of Commerce, the newly appointed head of the U.S. Patent and Trademark Office, <a href="https://www.law360.com/agencies/u-s-patent-and-trademark-office">Andrei Iancu</a>,
expressed his concern over the current state of the U.S. patent system, and pledged to make improvements within the Patent Office to strengthen and
increase predictability.&nbsp; New laws, courts decisions, and negative commentary over the past several years has discouraged innovation and investment,
to the detriment of the US economy. While acknowledging that the PTO must follow the law, Director Iancu seeks to provide more clarity for examiners,
patent attorneys and agents, and applicants regarding eligibility. He also discussed&nbsp;potential changes in the Patent Trial and Appeal Board procedures
for reviewing issued patents, where he has more latitude.</p>
<p>&nbsp;</p>
<p>Iancu's speech also called for an emphasis on&nbsp;the positive benefits the patent system brings to society, as opposed to the faults of the system, such
as litigation abuse and “bad” patents. He admitted legitimate differences of opinion on many patent issues, but Director Iancu's goal is to incentivize
and protect the technological advances that promote progress and development in our nation.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16254756&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fpatent-office-director-pledges-improvements-to-u-s-patentshttp://www.ipmvs.com/filewrapper/patent-office-director-pledges-improvements-to-u-s-patentsThu, 19 Apr 2018 05:00:00 GMTAll's Fair in Love and Litigation: The Intellectual Property War of Bumble and Tinder<h3 class="hidden">Post By Sarah Dickhut</h3>
<p>Last month Match Group, which owns Tinder (as well as OkCupid, Match.com and Plenty of Fish) filed suit against Bumble alleging patent infringement, trademark
infringement, and misappropriation of trade secrets. <em>See Match Group, LLC, Plaintiff, v. Bumble Trading Inc., Defendant,</em> 2018 WL 1371453 (W.D.Tex.).
Match Group argues that Whitney Wolfe-Herd, a co-founder of Tinder, left Tinder and created Bumble, a “Tinder Copycat.”</p>
<p>According to Match Group, Bumble directly infringes Match’s 9,733,811 patent (the '811 patent) directed to a method and system of profile matching, as
well as a non-transitory computer-readable medium for effectuating the same. Match Group also argues that Bumble infringes Match’s design patent, D798,314
(the '314 patent). The '314 patent is directed to an ornamental design where photographic cards are swiped left or right&mdash;<em>i.e. </em>the “swipe
left” or “swipe right” function that both apps use.</p>
<p>The complaint doesn’t stop with patent infringement: Match further alleges Bumble infringed Match’s trademark for the mark “swipe” in connection with computer
application software for mobile devices, and Match’s trade dress for the “iconic” user interface in the Tinder app. Match argues Bumble’s use of their
Trademark and Trade dress resulted in dilution of a “household name” and “cultural phenomenon” owned by Tinder.</p>
<p>Finally, Match Group accuses Bumble of misappropriating their trade secrets, specifically the concept of the “undo” function, which Match Group alleges
was being developed in part by Whitney Wolfe-Herd and several other Tinder employees who subsequently left to form Bumble. The complaint asserts that
the “undo” concept of Tinder is identical to Bumble’s “backtrack” feature.&nbsp;</p>
<p>Bumble responded about two weeks later with a countersuit of its own, alleging tortious interference, fraud, and a violation of Texas trade secrets law,
among other things. <em>See </em><em>Bumble Trading Inc., and Bumble Holding, Ltd., Plaintiff, v. Match group, LLC., Defendant</em>., 2018 WL 1570349
(Tex. Dist.). The crux of the countersuit argues that Match Group repeatedly attempted to acquire Bumble and in the prospect of a sale Bumble disclosed
sensitive financial information about the company; however, Match Group made offers that (in Bumble’s opinion) were unfairly low. Match Group rejected
the offers and instead of continuing negotiations, Match Group announced that Tinder would be introducing a women-make-the-first-move feature. Anyone
familiar with the Bumble app knows that the women-make-the-first-move feature is a hallmark trait of Bumble.&nbsp;Bumble argues in its countersuit
that Match Group requested proprietary information without disclosing that it was already planning to sue Bumble. Further, Bumble alleges that in order
to counteract the resulting adverse publicity of its “scare tactics,” Match falsely and fraudulently assured the public its intentions in suing Bumble
were honorable.<strong>&nbsp;</strong>&nbsp;Bumble in turn decided to release an <a href="http://thebeehive.bumble.com/bumbleblog/match-group-response">open letter</a> to the public asserting it was not intimidated by Match.</p>
<p>The lawsuit is further complicated by the fact that Whitney Wolfe-Herd, the founder of Bumble, also co-founded Tinder and was one of its first employees
as its vice president of marketing. In the early days of Tinder’s development, Ms. Wolfe-Herd was also in a relationship with Justin Mateen, Tinder’s
chief marketing officer. The relationship did not end well, to the point where Ms. Wolfe-Herd brought her concerns about Mateen’s behavior to the CEO
at the time, Sean Rad. However, Mr. Rad allegedly dismissed her concerns and ultimately fired Ms. Wolfe-Herd. In response, Wolfe-Herd filed a sexual
harassment lawsuit in 2014. Although Rad and Mateen have since left Tinder, it is from these circumstances that Bumble was born.</p>
<p>From a legal perspective, it will be interesting to see how the courts handle the business method claims of the ‘811 patent, as methods of conducting ordinary
business procedures are generally held to be non-patentable subject matter. <em>See Alice Corp. v. CLS Bank,</em> 134 S. Ct. 2347 (2014). Furthermore,
Match’s claims of trademark, trade dress and design patent infringement should prove intriguing in light of the recent litigation battle between Apple
and Samsung. This well-publicized litigation covers similar issues such as the (registered and unregistered) trade dress and design patents connected
to Apple’s rectangular phone and icon display. <em>See Samsung Electronics Co., Ltd. v. Apple Inc., </em>137 S. Ct. 429 (2016) (the case is entering
its eighth year of litigation and fourth jury trial scheduled for May 14, 2018). Given the intertwining of Bumble and Match not present in Apple v.
Samsung, and given the number of issues presented by the initial complaints, the battle between Bumble and Match promises to be a tech war of substantial
magnitude.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16239165&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252falls-fair-in-love-and-litigation-the-intellectual-property-war-of-bumble-and-tinderhttp://www.ipmvs.com/filewrapper/alls-fair-in-love-and-litigation-the-intellectual-property-war-of-bumble-and-tinderWed, 11 Apr 2018 05:00:00 GMTProtecting Concepts: The Best in Their Businesses Do Battle<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p>Basketball superstar Lebron James has challenged perennial college football power Alabama over a sports talk show staged in a barbershop. During last year’s
NBA finals, James’ multi-media business, Uninterrupted, premiered its show “The Shop” on ESPN featuring James and other professional players discussing
basketball in a barbershop. Alabama recently promoted its show “Shop Talk,” which also is set in a barbershop and features head football coach Nick
Saben and his former players talking about football. James claims that Alabama is infringing his intellectual property rights.&nbsp;</p>
<p>While this matter is interesting because of the parties involved, absent some novel legal reasoning the merits do not appear overly complex. Generally,
a concept is not protectable by patents or copyrights. Conception is the first step of invention, which also requires a reduction to practice before
patent protection can be granted. Copyrights protect the tangible expression of an idea, not the idea itself. Whether the trademarks “The Shop” and
“Shop Talk” are too close to one another depends on many facts, and whether there is a likelihood of confusion between these names. Trade secret protection
does not apply, since the barbershop talk show is not a secret.</p>
<p>Currently, only a demand letter has been sent from James to the University, and no suit has been filed in court. How this dispute ultimately resolves is
speculative, but the publicity that both parties will get from this matter is already building.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16222971&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fprotecting-concepts-the-best-in-their-businesses-do-battlehttp://www.ipmvs.com/filewrapper/protecting-concepts-the-best-in-their-businesses-do-battleThu, 05 Apr 2018 05:00:00 GMTAmazon Develops Drones that React to Human Gestures<h3 class="hidden">Post By Gregory "Lars" Gunnerson</h3>
<p>The technology of <a href="http://pdfpiw.uspto.gov/.piw?PageNum=0&amp;docid=09921579&amp;IDKey=C943E63D59C8&amp;HomeUrl=http%3A%2F%2Fpatft.uspto.gov%2Fnetacgi%2Fnph-Parser%3FSect2%3DPTO1%2526Sect2%3DHITOFF%2526p%3D1%2526u%3D%2Fnetahtml%2FPTO%2Fsearch-bool.html%2526r%3D1%2526f%3DG%2526l%3D50%2526d%3DPALL%2526S1%3D9921579.PN.%2526OS%3DPN%2F9921579%2526RS%3DPN%2F9921579">U.S. Patent No. 9,921,579</a>,
which issued on March 20, 2018, may help Amazon grapple with how flying robots might interact with human bystanders and customers waiting on their
doorsteps. Apple engineer <a href="https://www.linkedin.com/in/frederik-schaffalitzky-118a423">Frederik Schaffalitzky</a> (formerly an engineer for
Amazon) is the sole inventor responsible for these recent technological innovations.</p>
<p>While, the parent patent application to the above-identified patent issued as <a href="https://patents.google.com/patent/US9459620B1/">U.S. Patent No. 9,459,620</a> in July of 2016, this technology is now making waves because of increased publicity from several major news outlets, including an article from the
Washington Post which is owned by Amazon’s Jeff Bezos.</p>
<p>
<p>Some claims of the '579 patent require at least an unmanned aerial vehicle with a frame, a retaining system connected to the frame and configured to
retain a package, a communication system connected to the frame and configured to receive gesture input, and a management module associated with
at least the communication system. More specifically, the management module must be configured to navigate to a location associated with a profile
of a human user. The management module then receives via the communication system a gesture input comprising a gesture by a human user. In response
to receiving the gesture input, access gesture information describes one or more gestures capable of being recognized by the communication system.
Finally, the management module determines, based on the gesture input and the gesture information, a behavior adjustment for the unmanned aerial
vehicle with an instruction to the retaining system to release the package at the location.</p>
</p>
<p><em>Gregory “Lars” Gunnerson is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit </em> <a href="http://www.ipmvs.com/"><strong><em>www.ipmvs.com</em></strong> </a><em> or contact Lars directly via email at </em><a href="mailto:gregory.gunnerson@ipmvs.com"><strong><em>gregory.gunnerson@ipmvs.com</em></strong></a><em>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16199196&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252famazon-develops-drones-that-react-to-human-gestureshttp://www.ipmvs.com/filewrapper/amazon-develops-drones-that-react-to-human-gesturesWed, 28 Mar 2018 05:00:00 GMTJapan Invests in Astronautical Start-ups<h3 class="hidden">Post By Gregory "Lars" Gunnerson</h3>
<p>Michael Sheetz of CNBC <a href="https://www.cnbc.com/2018/03/20/japan-offers-940-million-to-boost-nations-space-startups.html">reports</a> “Japan is offering
$940 million to fund space start-ups in a new push to grow the industry, the government announced Tuesday at an event in Tokyo” and that “funds will
be made available through investments and loans over the next five years, as part of a government-led initiative to double Japan's more than $11 billion
space industry. With less than 20 Japanese space start-ups currently operating, many see this as critical to helping new companies cover costs such
as research or applying for patents.”</p>
<p>The Japanese legal system may also be altered or improved such that it would allow businesses to own land developed on the moon. The United States and
Luxembourg currently have similar laws on the books. Japan, however,&nbsp;differs from the U.S. and Luxembourg because Japan is&nbsp;considering passing
these laws before specific materials&nbsp;are mined and extracted in space from comets, planetary objects, or other interstellar objects.</p>
<p>At least with respect to Luxembourg, the legal framework implemented in the tiny European country is credited with attracting dozens of space companies,
with as many as seventy other space companies looking to establish a presence in Luxembourg, according to Deputy Prime Minister Etienne Schneider.</p>
<p><em>Gregory “Lars” Gunnerson is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit </em>
<a href="http://www.ipmvs.com/"><strong><em>www.ipmvs.com</em></strong>
</a><em> or contact Lars directly via email at </em><a href="mailto:gregory.gunnerson@ipmvs.com"><strong><em>gregory.gunnerson@ipmvs.com</em></strong></a><em>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16200394&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fjapan-invests-in-astronautical-start-upshttp://www.ipmvs.com/filewrapper/japan-invests-in-astronautical-start-upsWed, 28 Mar 2018 05:00:00 GMTSCOTUS to Examine Extraterritorial Infringement Liability and Damages<p>As a follow up to the MVS Briefs Article, “<a href="briefs/September_2017_Final.pdf">Extraterritorial Infringement Liability</a>,” authored by Heidi S.
Nebel, this blog post examines the briefing in the <em>Western Geco LLC v. ION Geophsycial Corp.</em> case set for oral argument before the United
States Supreme Court on April 16, 2018.</p>
<p>The question presented to the Court is “[w]hether the court of appeals erred in holding that lost profits arising from prohibited combinations occurring
outside of the United States are categorically unavailable in cases where patent infringement is proven under 35 U.S.C. § 271(f).” Petition for Writ
of Certiorari, <em>WesternGeco</em>, No. 16-1011 (available <a href="http://www.scotusblog.com/wp-content/uploads/2017/03/16-1011-Cert-Petition.pdf">here</a>).</p>
<p>The Federal Circuit applied the general presumption against extraterritoriality standard, thus basically implying that foreign actions are intervening
acts which would sever traditional proximate cause analysis for infringement.</p>
<p>It is the Petitioner’s argument that the presumption against extraterritoriality should not apply here, as the statutes regarding infringement and damages
are clear, i.e., the provisions of 35 U.S.C. § 271(f)(1) and (2), which address the situation where a defendant successfully avoided infringement by
exporting multiple sub-assemblies&nbsp;of an infringing product which could be easily reassembled upon receipt. <em>See Deepsouth Packing Co. v. Laitram Corp.</em>,
406 U.S. 518, 526-538 (1972).</p>
<p>The Respondent rephrases the question presented to state: "[w]hether this Court should overrule <em>Microsoft v. AT&amp;T </em>and eliminate the presumption
against extraterritoriality so that infringers are subject to damages under § 284 based on non-infringing foreign use by third parties.” The <em>Microsoft v. AT&amp;T</em> decision held that the presumption against&nbsp;territoriality applied to <u>all laws, and especially patent laws</u>. <em>See</em> 550<em> U.S. 437</em> (2007). </p>
<p>&nbsp;</p>
<p>Stay tuned to Filewrapper for our next blog post related to this case, which will cover the oral arguments taking place on April 16, 2018.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16195609&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fscotus-to-examine-extraterritorial-infringement-liability-and-damageshttp://www.ipmvs.com/filewrapper/scotus-to-examine-extraterritorial-infringement-liability-and-damagesTue, 27 Mar 2018 05:00:00 GMTPatentability and Patent Protection: Is the Pendulum Starting to Swing Back?<h3 class="hidden">Post By Oliver Couture</h3>
<p>The latest US Chamber of Commerce Global Innovation Policy Center’s International IP Index still places the US on top overall for intellectual property.
However, this is due to strength in enforcement of copyrights and trademarks, and improvements in identifying counterfeit goods before they enter the
country. According the to Index, the US has dropped to 12<sup>th</sup> place out of 50 economies in recent years. This places the US equal with Italy
and just in front of Hungary, with several EU countries, Switzerland, South Korea, Japan, and Singapore ranking higher. According the US Chamber, this
drop is due to two issues in the US patent system: patentability requirements and patent opposition.</p>
<p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; The lower score of patentability requirements is a result of
inconsistently and difficulty in applying the Supreme Court decisions in <em>Myriad</em>, <em>Mayo</em>, and <em>Alice</em>. The Index states these
decisions have “seriously undermin[ed] the long-standing world-class innovation environment and threatens the nation’s global competitiveness.” Further,
the Index points toward the disproportionately high rate of patent oppositions, specifically IPRs, and low rates of cases surviving with all claims
being considered patentable as causing a lack of predictability for patent owners compared to other post-grant oppositions systems. This in turn has
lead to additionally litigation, costs, and risks for patent owners.</p>
<p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; However, recent developments at both the Federal Circuit and
Congress may start to push back on both the inconsistencies in patentability requirements and the high rate of patent oppositions with low outcomes.
A series of cases this year,<em>Berkheimer</em>, <em>Aatrix</em>, and <em>Exergen</em>, have resulted in overturning the District Court’s holding of
invalidity on factual analysis, specifically if claims were not “well-understood, routine, and conventional activities,” they are patentable subject
matter.&nbsp;</p>
<p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; This week the House has also introduced a bill: the STRONGER
Patents Act of 2018. The Act mirrors the bill introduced in the Senate last year and focuses mainly on post grant procedures. Several of the proposed
changes aim to harmonize claim construction with litigation, while making it harder for people without standing to challenge a patent, eliminate serial
challenges, give priority to federal court, and make it easier to amend claims.</p>
<p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Thus, there is some movement at both the judicial and legislative
levels to address some of the concerns of patent owners and may start alleviate some of the uncertainty in patentability and reduce the high rate of
patent oppositions.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16184571&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fpatentability-and-patent-protection-is-the-pendulum-starting-to-swing-backhttp://www.ipmvs.com/filewrapper/patentability-and-patent-protection-is-the-pendulum-starting-to-swing-backFri, 23 Mar 2018 05:00:00 GMTPatent Proposals in Congress<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p>Since the creation of patent reviews at the Patent Office Trial and Appeal Board (PTAB) by the America Invents Act of 2011, a very high percentage of reviewed
patents have been declared invalid. Now, a bill has been introduced in the House of Representatives which could change these statistics. The bill also
could revive issuance of injunctions against adjudicated infringers, which has been very difficult in recent years in view of a 2006 U.S. Supreme Court
decision.</p>
<p>The sponsors of the bill are Bill Foster, an Illinois Democrat, and Steve Stivers, an Ohio Republican. The bill’s acronym is STRONGER, for Support Technology
and Research for Our Nation’s Growth and Economic Resilience.</p>
<p>Among other things, the bill would raise the burden of proof for the challenger at the PTAB from a preponderance of evidence to clear and convincing evidence,
which is the same standard for proving invalidity in a court proceeding. The bill also adds a prerequisite that a PTAB challenge can only be filed
by a party who has been sued for infringement.</p>
<p>The sponsors assert that the current patent system has been weakened, and needs modification&nbsp;to encourage research and innovation. They also seek
to provide the same opportunities to independent inventors and small business that bigger patent owners enjoy. Their goal is a patent system that is
cheaper, faster, and fairer for everyone.</p>
<p>Reaction to the proposed bill is generally divided by industries. The pharma and biotech industries support the bill’s changes strengthening the patent
owner’s ability to enforce their patent rights against accused infringers, and thus encourages investment in innovation. In comparison, the tech industry
prefers the current patent environment, and believe the bill will encourage litigation abuse. Other opponents think the bill undermines the fight against
frivolous infringement litigation.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16180425&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fpatent-proposals-in-congresshttp://www.ipmvs.com/filewrapper/patent-proposals-in-congressWed, 21 Mar 2018 05:00:00 GMTInventor of Long-Range Air Communications with Conformal Antennas Inducted into Hall of Fame<h3 class="hidden">Post By Gregory "Lars" Gunnerson</h3>
<p><a href="http://www.cpnas.org/aahp/biographies/howard-s-jones-jr.html">Howard S. Jones, Jr.</a> has been&nbsp;posthumously honored as a 2018 inductee into
the National Inventors Hall of Fame for his innovative work in developing conformal antennas.&nbsp; This invention&nbsp;has been crucial for the development
of&nbsp; enhanced capabilities for spacecraft, rockets and other aeronautical technologies.</p>
<p>March 1, 2018 marked the 41<sup>st</sup> anniversary of the issuance of <a href="https://patents.google.com/patent/US4010470A/">U.S. Patent No. 4,010,470</a>,
a patent titled “<strong>Multi-function integrated radome-antenna system</strong>” in which Jones is named as the sole inventor. Technology disclosed
in the ‘470 patent has since been incorporated into aircraft for both military and space applications, including the Patriot guided missile and NASA’s
Voyager spacecraft.</p>
<p>Jones earned his undergraduate degree in Mathematics and Physics from Virginia Union University in 1943. Upon graduating, Jones served two years in the
U.S. Army during WWII as a Signal Corps specialist in Japan and taught mechanical engineering subjects to Army officers.&nbsp; Jones also worked “as
a researcher at the Ordnance Development Division, later known as Harry Diamond Laboratories, of the National Bureau of Standards, now the National
Institute of Standards and Technology (NIST). Jones’ research work focused on antenna technology and he received 31 patents during his 34-year career
at the Army research lab. By the mid-1970s, Jones was working on solving the problem of external antennas creating drag on missiles and rockets. Antennas
were important not only for high-precision guidance systems but also to receive electronic detonation signals over a long distance. Working with copper
wire, Jones was able to develop antenna arrays which conformed to the shape of missile casings and aircraft exteriors, reducing drag, weight and costs
while also improving the performance of the antenna."</p>
<p>We join in celebration of the life of Inventor Howard S. Jones, Jr. for this fantastic achievement!</p>
<p><em>Gregory “Lars” Gunnerson is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit</em> <a href="http://www.ipmvs.com/"><strong><em>www.ipmvs.com</em></strong> </a><em> or contact Lars directly via email at </em><a href="mailto:gregory.gunnerson@ipmvs.com"><strong><em>gregory.gunnerson@ipmvs.com</em></strong></a><em>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16162934&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252finventor-of-long-range-air-communications-with-conformal-antennas-inducted-into-hall-of-famehttp://www.ipmvs.com/filewrapper/inventor-of-long-range-air-communications-with-conformal-antennas-inducted-into-hall-of-fameMon, 19 Mar 2018 05:00:00 GMTA New Manual of Patent Examining Procedure (MPEP) is Available / So is A Revised Chapter 2000 For Duty of Disclosure<h3 class="hidden">Post By Xiaohong Liu</h3>
<p>A New Manual of Patent Examining Procedure (MPEP), the ninth edition, Revision 08.2017, was made electronically available on <u>January 25, 2018</u>
</p>
<p>According to the PTO bulletin for the new MPEP, the revision includes changes to chapters 200, 700-1000, 1200, 1400, 1500, 1800, 2000-2300, 2500, and 2700.
Each section that has been substantively revised has an indicator, for example&nbsp;[R-08.2017], meaning that the section has been updated as of August
2017. Appendices L and R were revised to include the laws and rules current as of Aug. 31, 2017, and Appendices T and AI were revised to reflect the
PCT Articles, Rules, and Administrative Instructions that were in force effective July 1, 2017.</p>
<p>The previous MPEP, the ninth edition, <u>Revision 07.2015</u>, was published in November, 2015, reflecting Patent Laws and Rules as in force effective
July 1, 2015. It is fair to say that a lot of changes in Patent Laws and Rules occurred since then.</p>
<p>One of the major additions in the new MPEP is the inclusion of all of the USPTO’s patent-eligibility guidelines. Thus, the new MPEP is now very helpful
resource to look at when a patent-eligibility issue is involved during your patent drafting, prosecution, and especially discussion with the Examiners.&nbsp;
However, three recent court opinions regarding possible factual aspects of any eligibility analysis, from the U.S. Court of Appeals for the Federal
Circuit (CAFC), may have caused some uncertainty to some rules for Examiners to decide patent-eligibility based on common knowledge or expertise.&nbsp;</p>
<p>The other important feature of the new MPEP is a revised chapter for Duty of Disclosure, Chapter 2000. Almost all of the subsections except two have been
revised.&nbsp; You owe the Patent Office “a duty of candor and good faith which is broader than the duty to disclose material information.” MPEP 2001.04.&nbsp;</p>
<p>In this new MPEP, Chapter 2000 for Duty to Disclose was “updated to generally reflect duty of disclosure owed to the Office by individuals associated with
filing and prosecution of any application" to add text explaining aspects of this duty to disclose in accordance with the America Invents Act (AIA);
to add a new section to provide guidance on correction of errors in an application; to limit the applicability of certain MPEP sections to reissue
applications filed before September 16, 2012; and to revise guidance pertaining to the duty of disclosure in reexamination (<em>ex parte</em> and <em>inter partes</em> ) proceedings for consistency with the language of 37 CFR 1.555. Change Summary, MPEP, Rev. 08.2017.</p>
<p>This new chapter for duty of disclosure is a must to read for “each inventor named in the patent application; each attorney or agent who prepares or prosecutes
the application; and every other person who is substantively involved in the preparation or prosecution of the application and who is associated with
the inventors, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.” 37 CFR 1.56(c); MPEP 2001.01.&nbsp;&nbsp;</p>
<p>This duty is limited to those who are substantively involved in the preparation or prosecution of the application. MPEP 2001.01.&nbsp; You have no such
duty if you are a typist, clerk, or similar personnel who assists with an application.&nbsp; Id.&nbsp; “The duty of disclosure applies to only to individuals,
not to organizations.”&nbsp; Id. &nbsp;This duty is not limited to representations to or dealing with the examiner, but extends to proceedings before
the Patent Trial and Appeal Board (PTAB) and the Office of the Commissioner for Patents. MPEP 2001.03.</p>
<p>The information for disclosure means all of the kinds of information which is “material to patentability”, including prior art such as patents and publications,
information on enablement, possible prior public uses, sales, derived knowledge, prior invention by another, inventorship conflicts, litigation statements,
and like. MPEP 2004.04.&nbsp; Information yielded in court litigations, trial, and/or PTAB trial proceedings such as inter parties review, post-grant
review, and covered business method review that may be considered material to pending related patent applications has to be disclosed as well.&nbsp;
MPEP 2001.06.</p>
<p>In this new revision, the Office recognizes the different standards used for “material information in courts and in Office." MPEP 2000.1. The Office issued
a Notice of Proposed Rulemaking proposing revisions to the Office standard and is trying to harmonizing its standard with one as set forth by CAFC.&nbsp;
The revised chapter tries to provide guidance on compliance with the duty of disclosure regardless of the materiality standard.&nbsp; Id.</p>
<p>The new chapter for Duty of Disclosure is only 18 page long, a short one compared to other chapters. Careful reading of the whole chapter, especially “§2004
Aids to Compliance With Duty of Disclosure” is highly recommended if you are a person who has such a duty, since “a finding of “fraud,” “inequitable
conduct,” or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or
invalid.” MPEP 2016.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16155999&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fa-new-manual-of-patent-examining-procedure-mpep-is-available-so-is-a-revised-chapter-2000-for-duty-ohttp://www.ipmvs.com/filewrapper/a-new-manual-of-patent-examining-procedure-mpep-is-available-so-is-a-revised-chapter-2000-for-duty-oThu, 15 Mar 2018 05:00:00 GMTJust Because It’s Nanoscale, Doesn’t Mean It’s Not a Big Deal<h3 class="hidden">Post By Jonathan L. Kennedy</h3>
<p>Nanotechnology has been taking innovation by storm for decades now and its only increasing its footprint. This is reflected in the growing number of granted patents and published applications directed to nanotechnology inventions. For example, according to <a href="http://www.statnano.com">StatNano</a> (an organization that monitors and publishing information regarding nanotechnology global developments), more than 20,000 granted patents and patent applications were published by the US Patent &amp; Trademark Office (USPTO) in 2017 directed to nanotechnology.&nbsp; These numbers have only been growing. For example, the number of patents granted and applications published by both the USPTO and European Patent Office (EPO) grew from the year 2016 to the year 2017 grew.</p>
<p>The impact of nanotechnology can also be seen in the accomplishments that nanotech innovations provide.&nbsp; For example, nanotechnology has been used to improve composite materials making them stronger, lighter, and impact resistant.&nbsp; This has benefited aricraft, motor vehicles, boats, and even safety equipment that atheletes, workers, and public servants wear.&nbsp; Similarly, nanotechnology is at the core of improved electronics such as smart phones and TVs, and energy storage systems including battery technology.</p>
<p>The significance of nanotechnology can also be reflected in the amount of grant money awarded to nanotechnology research.&nbsp; For example, it is reported that the U.S., through state and federal grants, awarded $1.72 billion in 2013 and $1.67 billion in 2014 to nanotechnology research.&nbsp; In 2001, the U.S. federal government created an R&amp;D initiative, the<a href="http://www.nano.gov/">National Nanotechnology Initiative</a> (NNI), which spans 20 federal departments and agencies.&nbsp; The NNI partners with research groups, industry, agencies, and universities and has awarded more than $25 billion in research funding since its 2001 inception, including more than $1 billion in funding through SBIR grants.</p>
<p>Thus, even though technology on the nanoscale is small we can expect to see its growth and impact all around us.&nbsp; If you are in the nanotechnology space, you should certainly consider what intellectual property protections can be used to guard your innovation and grow your business.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16142555&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fjust-because-it-s-nanoscale-doesn-t-mean-it-s-not-a-big-dealhttp://www.ipmvs.com/filewrapper/just-because-it-s-nanoscale-doesn-t-mean-it-s-not-a-big-dealFri, 09 Mar 2018 06:00:00 GMTIn Memoriam--Michael Voorhees<h3 class="hidden">Post By Heidi S. Nebel</h3>
<p><strong>IN MEMORIAM</strong></p>
<p>&nbsp;</p>
<p><strong>Michael G. Voorhees</strong></p>
<p><strong>1941-2018</strong></p>
<p><strong>&nbsp;</strong></p>
<p><strong>We are deeply saddened by the loss of an exceptional friend, partner, advocate, and leader.</strong></p>
<p>&nbsp;</p>
<p>Mike was born in Des Moines, Iowa on April 17, 1941 and received degrees from Iowa State University and Drake Law School. He practiced law in St. Louis, before joining the firm in 1970. He spent the rest of his career with the firm until his retirement in December 2012. Mike served on the management committee and as managing partner for many years. He was also an adjunct Professor of Law at Drake where he taught patent and trademark courses.&nbsp; Mike was a role model and mentor to generations of lawyers within the firm, to the students he taught, and to the many clients who relied on his expertise and advice over his 40 plus years of practice.</p>
<p>&nbsp;</p>
<p>Mike shared his time and knowledge generously, he served as a National Board Member of the YMCA, one of his most revered accomplishments. He had a passion for life and enjoyed many diverse interests. He refused to work on his birthday each year, rather, he chose to spend the day filled with gardening and the family he loved. He was also passionate about baseball, and specifically, the St. Louis Cardinals. The firm gave him a picture of Cardinal Hall of Famer’s, which had been autographed by Tony LaRussa.&nbsp; It became one of his most prized possessions.</p>
<p>&nbsp;</p>
<p>His leadership, skill in the practice of law, and service to his clients built the foundation that MVS continues to thrive upon. His legacy is felt in every word of the membership agreement, much of which he authored, and upon which our business values were formed.&nbsp; Mike will be greatly missed, and everyone here at MVS is now tasked with continuing his legacy of excellence in law, business, and life.</p>
<p>&nbsp;</p>
<p>&nbsp;</p>
<p>&nbsp;</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16116585&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fin-memoriam-michael-voorheeshttp://www.ipmvs.com/filewrapper/in-memoriam-michael-voorheesFri, 02 Mar 2018 06:00:00 GMTPatent Covering Methods of Advanced Genomic Selection from Guinea Pigs to Corn Survives Opposition in EU<h3 class="hidden">Post By Cassie J Edgar</h3>
<p>Effectively protecting improved genetics requires a multi-pillared strategy considering the biological organisms themselves, methods of use, methods of
breeding, and any regulatory data protection. The EPO recently upheld a patent (<a href="https://patentimages.storage.googleapis.com/f3/c8/2a/83594ea8ef8564/EP2813141B1.pdf">EP 2813141,</a> granted August 5, 2015) drawn to methods of breeding using genome-wide estimated breeding values (EBVs) to identify combinations of individuals in
a population which yield a probability of improving at least one phenotypic trait of interest in resulting offspring. This, according to <a href="http://www.keygene.com/wp-content/uploads/2018/02/Press-release-Keygene’s-directed-genomic-selection-strategies-patent-upheld-by-European-Patent-Office-after-opposition.pdf">KeyGene’s press release</a>,
was the first European patent granted in the field of genomic selection. An opposition was filed by <a href="http://www.kws.com/aw/KWS/company-info/Company/~efpj/">KWS</a> in June of 2016. After oral proceedings on February 1<sup>st</sup> in Munich, the patent was upheld. The ability to obtain and defend such IP protection
in genomics is a positive result for companies investing in improving genetics and bringing innovative technologies to market across plant and animal
species.</p>
<p>The main claim is directed a method of breeding comprising eight steps, for selecting individuals within a breeding population whose offspring have a higher
combined genome-wide EBV for at least one phenotypic trait, as compared to 70% of the other combinations. Additional claims in the patent as granted
are dependent from this main claim and include further limitations such as specific molecular marker techniques for calculating recombination probabilities.
Other dependent claims include further detail on type and ploidy of claimed organisms, with species ranging from guinea pigs to corn. The final claim
is directed to products produced by any of the method claims, “preferably wherein the product is a plant.”</p>
<p>KWS&nbsp;will have two months to appeal the decision - stay tuned for further details.</p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/cassie-j-edgar" title="Cassie J. Edgar">Cassie J. Edgar</a> </strong></em><em>is </em>Patent Attorney
and Chair Regulatory &amp; Product Development Law Practice Group <em>at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit</em> <a href="http://www.ipmvs.com/"><em><strong> www.ipmvs.com</strong></em> </a><em>or contact Cassie directly via email at<a href="mailto:cassie.edgar@ipmvs.com"> cassie.edgar@ipmvs.com</a>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16100542&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fpatent-covering-methods-of-advanced-genomic-selection-from-guinea-pigs-to-corn-survives-opposition-ihttp://www.ipmvs.com/filewrapper/patent-covering-methods-of-advanced-genomic-selection-from-guinea-pigs-to-corn-survives-opposition-iFri, 23 Feb 2018 06:00:00 GMTUber Learns Trade Secret Law the Hard Way in Settlement with Waymo over Self-Driving Car Technology<p>In the middle of trial with Google’s self-driving car company, Waymo, Uber settled the trade secret litigation brought by Google. Uber will turn over 0.34%
of its equity, which has been estimated at $245 million dollars in value. The dispute resulted when Uber hired a former employee of Waymo, not knowing
that the engineer had downloaded 14,000 copies of company documents before leaving. Uber did not require the employee to sign an agreement confirming
he was not bringing confidential information with him, even though Uber had later required other employees to do so. An entrance interview with a new
employee from a competitive company with a caution about not bringing the competitor trade secrets along would have also benefited Uber. Litigation
showed that the employee had been courted by the now-fired CEO of Uber while he was still a Google employee. The employee left to start his own company,
and within a year the company was purchased by Uber. </p>
<p>The settlement came even though it was to date not clear any stolen information was used by Uber in developing its laser technology for self-driving cars.
As stated by the new Uber CEO, Dara Khosrowshahi, “As Uber’s statement indicates, no trade secrets ever came to Uber,” but continued that had the trial
proceeded Uber was expected to prevail. He added “While I cannot erase the past, I can commit, on behalf of every Uber employee that we will learn
from it.” </p>
<p>Learning from other’s mistakes is the best way to learn a hard lesson. These include using exit interviews with employees who leave having had access to
trade secrets; conducting entrance interviews, especially with employees from competitors; getting signed employee agreements on trade secrets (keeping
your own and keeping others’ out); and including in employee agreements so-called “whistleblower” exemption language to assure that it will fall under
the new trade secret law. As per Catherine Aird, if you can’t be a good example, at least you can be a horrible warning.</p>
<h3 class="hidden">Post By Patricia Sweeney</h3>
<p><em><strong><a href="https://www.filewrapper.com/attorneys/patricia-a-sweeney">Patricia Sweeney</a></strong> is an Intellectual Property Attorney in the Biotechnology/Chemical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <strong><a href="https://www.filewrapper.com/filewrapper/www.ipmvs.com">www.ipmvs.co</a></strong><strong><a href="https://www.filewrapper.com/filewrapper/www.ipmvs.com">m</a></strong> or contact Pat directly via email at <strong><a href="mailto:patricia.sweeney@ipmvs.com">patricia.sweeney</a></strong></em><strong><em><em><a href="mailto:patricia.sweeney@ipmvs.com">@ipmvs.co</a>m</em></em></strong><em>. </em> </p>
<p>&nbsp;</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16100674&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fuber-learns-trade-secret-law-the-hard-way-in-settlement-with-waymo-over-self-driving-car-technologyhttp://www.ipmvs.com/filewrapper/uber-learns-trade-secret-law-the-hard-way-in-settlement-with-waymo-over-self-driving-car-technologyFri, 23 Feb 2018 06:00:00 GMTFederal Judge Rules Embedded Tweet Violated Copyright<h3 class="hidden">Post By Brandon Clark</h3>
<p>In a surprising ruling, U.S. District Court Judge Katherine B. Forrest, recently ruled that several news organizations and publishers violated a photographer’s
copyright when they “embedded” a photo from Twitter on their websites without permission. Judge Forrest’s decision to grant the plaintiff’s motion
for partial Summary Judgement is sure to be controversial and could prove to be very significant, potentially disrupting the way that news outlets
and other websites use Twitter.</p>
<p>Photographer Justin Goldman took a photograph of New England Patriots’ quarterback Tom Brady and uploaded the photo to Snapchat. The photo went viral with
others uploading it to Twitter and subsequently, various news organizations embedded the tweets with the image included in news stories. Goldman filed
the lawsuit against Breitbart, Time Inc., Yahoo, The Boston Globe, and multiple other defendants claiming they violated his exclusive right under U.S.
Copyright law to display his photo. It’s important to note that none of the defendants copied or saved Goldman’s photo to their own servers, rather
they embedded links to Twitter, on their own websites.</p>
<p>The news organizations argued that the “Server Test” held that the publishers aren’t liable for infringement when they embed content hosted on third party
servers. The Server Test is based on a 9<sup>th</sup> Circuit ruling, but Judge Forrest noted that outside of the 9<sup>th</sup> Circuit, the test
has not been widely adopted, thus allowing her to depart from the application of the Server Test.</p>
<p>Judge Forrest ultimately decided, “Having carefully considered the embedding issue, this Court concludes, for the reasons discussed below, that when defendants
caused the embedded Tweets to appear on their websites, their actions violated plaintiff’s exclusive display right; the fact that the image was hosted
on a server owned and operated by an unrelated third party (Twitter) does not shield them from this result.”</p>
<p>However, the ruling doesn’t mean the news organizations have necessarily lost the case. Judge Forrest notes a number of unresolved strong affirmative defenses
to liability and states, “In this case, there are genuine questions about whether plaintiff effectively released his image into the public domain when
he posted it to his Snapchat account,” and goes on to say, “Indeed, in many cases there are likely to be factual questions as to licensing and authorization.
There is also a very serious and strong fair use defense, a defense under the Digital Millennium Copyright Act, and limitation on damages from innocent
infringement.“</p>
<p><em><b><a href="https://www.ipmvs.com/attorneys/brandon-w-clark" title="Brandon W. Clark">Brandon W. Clark</a></b> is the Chair of the <b><a href="https://www.ipmvs.com/services/copyright-and-media-law" title="Copyright, Entertainment &amp; Media Law">Copyright, Entertainment &amp; Media Law Practice Group</a></b> at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit</em> <a href="http://www.ipmvs.com"><b><em>www.ipmvs.com</em></b> </a><em> or contact Brandon directly via email at </em><a href="mailto:brandon.clark@ipmvs.com"><em>brandon.clark@ipmvs.com</em></a><em>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16096791&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252ffederal-judge-rules-embedded-tweet-violated-copyrighthttp://www.ipmvs.com/filewrapper/federal-judge-rules-embedded-tweet-violated-copyrightWed, 21 Feb 2018 06:00:00 GMTThe Plant Naming Conundrum … Protecting Your Plant Varieties in the Short and Long Term<h3 class="hidden">Post By Christine Lebron-Dykeman</h3>
<p>Development of a new plant cultivar or varietal often requires substantial research and development. These costs can be recovered, however, if a breeder
is able to successfully market, sell and/or license the resulting product, while maintaining exclusive ownership rights therein.&nbsp; There are, of
course, a variety of intellectual property protection schemes available to maintain those exclusive rights, including plant patents, utility patents,
plant variety protection (PVP), and/or trade secrets which each offer distinct benefits. However, because patents and PVP protection are subject to
strict time limitations, and trade secrets can be difficult to maintain in some instances, breeders should also consider protection under the trademark
laws of the United States, which can provide perpetual protection so long as the trademark is used in commerce.&nbsp;
<br />
</p>
<p>Choosing the right trademark or name is an important consideration that should be undertaken <u>before</u> any patents or PVPs are filed because it is
critical that the trademark or brand name under which the plants are intended to be sold is different than the name used to designate the varietal
or cultivar in a patent or a PVP.</p>
<p>Plant breeders perhaps unknowingly face a difficult conundrum when choosing the name of newly created varietal designation if they intend to seek more
than one type of intellectual property protection.</p>
<p>When filing for PVP, the International Convention for the Protection of New Varieties of Plants (UPOV) requires that the PVP application designate the
variety "by a denomination" which will be its generic designation.&nbsp; 1991 UPOV Article 20(1).&nbsp; That denomination&mdash;or name&mdash;is the
very name that <u>must</u> be used by any third party producing that variety even after the expiration of the plant variety protection. 1991 UPOV Article
20(7) (requiring that any person who "offers for sale or markets propagating material" of a PVP-protected variety in the jurisdiction where the variety
is protected must use the variety denomination, even after the PVP expires).&nbsp; Likewise, when filing for a Plant Patent under 35 U.S.C. § 161,
a varietal denomination is required under 37 C.F.R. 1.163(c)(5).</p>
<p>Unfortunately, however, this variety denomination requirement often interferes with the breeder’s claim to rights under another, potentially far more long-lasting
form of intellectual property protection, namely trademark protection. The Federal Circuit has held that as a matter of law that plant varietal names&mdash;e.g.,
variety denominations used in PVPs or patents&mdash;which are the "generic" designation do not function as <u>source identifiers</u> and thus are not
subject to trademark protection. <em>In re Pennington Seed, Inc.</em>, 466 F.3d 1053, 1057, 80 USPQ2d 1758, 1761 (Fed. Cir. 2006) In other words, because
any person who sells the variety must use the denomination, and a consumer “has to have some common descriptive name he can use to indicate that he
wants one [particular] variety of apple tree, rose, or whatever, as opposed to another,” the varietal name used in any Patent or PVP can never be associated
with a single source and thus cannot act as a brand for that particular variety. <em>Id</em>.&nbsp; What is more, because U.S. trademark law prohibits
registration of any descriptive mark on the Principal Register (without evidence of secondary meaning/acquired distinctiveness), any varietal/cultivar
name will also be refused registration on the <u>Principal</u> Register for use on products that incorporate the varietal/cultivar name as an ingredient
(e.g., baking flour made from a wheat varietal).</p>
<p>Should the varietal name appear in a plant patent or PVP application as well as a trademark filing, there is little an applicant can do to convince the
USPTO the varietal name is not generic. Provisional rejections&nbsp;for lack of distinctiveness are not easily overcome in this regard. As such, care
should be taken to distinguish varietal name from a trademark from the outset. Prior to filing any patent or PVP, breeders should consider what brand
they want to eventually sell under and reserve that name for Trademark protection, and instead use letters, numbers, or code names for plants in patents,
PVP, or anywhere where they are describing the varietal/cultivar.</p>
<p><em>The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.</em>
</p>
<p><em><p><em><strong><a href="https://www.ipmvs.com/attorneys/christine-lebron-dykeman" title="Christine Lebron-Dykeman">Christine Lebron-Dykeman</a></strong> is Chair of the Trademark Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit <a href="http://www.ipmvs.com/"><strong>www.ipmvs.co</strong><strong>m</strong></a> or contact Christine directly via email at </em><strong><em><a href="mailto:christine.lebron-dykeman@ipmvs.com"><em>christine.lebron-dykeman@ipmvs.com</em></a></em></strong><em>.</em> </p>
</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16084580&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fthe-plant-naming-conundrum-protecting-your-plant-varieties-in-the-short-and-long-termhttp://www.ipmvs.com/filewrapper/the-plant-naming-conundrum-protecting-your-plant-varieties-in-the-short-and-long-termThu, 15 Feb 2018 06:00:00 GMTThe Future of GMOs in the UK Post-Brexit<h3 class="hidden">Post By Sarah Dickhut</h3>
<p>Following the United Kingdom triggering its formal <a href="https://www.cnn.com/2017/03/29/europe/article-50-brexit-theresa-may-eu/index.html">exit</a> from the European Union, negotiations regarding the details of the exit and the following transition period have begun. As one could expect, this negotiation
process has brought to light underlying tensions between the UK and the EU. These tensions recently reached a peak when earlier this month the EU's
negotiator <a href="https://www.reuters.com/article/uk-britain-eu-barnier/eus-barnier-warns-britain-post-brexit-transition-not-a-given-idUSKBN1FT1NL">warned</a> that a post-Brexit transition is "not given" as parts of the EU's terms for the exit are non-negotiable, despite the UK's "substantial" objections.
Although the strain between the two entities somewhat&nbsp;<a href="http://www.bbc.com/news/uk-politics-43062112">declined</a> in the following days,
the fate of the UK is by no means certain.</p>
<p>The uncertainty created by Brexit threatens to overshadow even the more decided areas of the exit--but that is not necessarily all bad. For example, the
UK has indicated it will maintain much of the intellectual property law set in place by the EU. But within the broad standards of uniform intellectual
property protection, the UK would still have significant leeway to modify its own regulations. One such area of intellectual property law is the realm
of genetically modified organisms (GMOs). In the wake of Brexit, the UK government has <a href="http://www.parliament.uk/business/publications/written-questions-answers-statements/written-question/Commons/2016-10-13/48641">confirmed</a> that it will review the existing regulations on genetically modified (GM) products. Although the regulations are less likely to be modified to allow&nbsp;<em><a href="http://www.telegraph.co.uk/news/2017/11/28/gm-crops-will-continue-banned-britain-brexit-says-michael-gove/">human</a></em> <a href="http://www.telegraph.co.uk/news/2017/11/28/gm-crops-will-continue-banned-britain-brexit-says-michael-gove/"> consumption</a> of GMOs, regulations
allowing the development and sale of GM products for other purposes (like animal feed) are not off the table.&nbsp;</p>
<p>The United Kingdom is one of the most <a href="http://blogs.lse.ac.uk/europpblog/2017/11/13/how-eu-member-states-have-tried-and-failed-to-reach-agreement-on-gmos-and-what-it-could-mean-for-eu-decision-making/">pro-GMO</a> member states of the European Union. The UK also currently <a href="https://perma.cc/A33B-EVGD">imports</a> GM commodities (although it does not yet
commercially grow GM products). More significantly, a substantial amount of the UK's agricultural production is devoted to cereals, including wheat
and barley. If the UK modified its existing regulations to allow for the growth and sale of GM cereals, even for purposes besides human consumption,
this would allow the UK to enter global agricultural markets on a more competitive scale. It would additionally create immense new opportunities for
patent and plant variety protection within the UK. Patentees interested in GMO protection should watch carefully as the UK revisits its GMO regulations,
and develop a contingency plan for protection within the UK.</p>
<p>
<p><em><a href="https://www.ipmvs.com/attorneys/sarah-m-dickhut" title="Sarah M. Dickhut">Sarah Dickhut</a> is an Associate Attorney in the Chemical/Biotech Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <a href="http://www.ipmvs.com/"><strong>www.ipmvs.co</strong><strong>m</strong></a> or contact Sarah directly via email at </em><strong><em><a href="mailto:sarah.dickhut@ipmvs.com"><em>sarah.dickhut@ipmvs.com</em></a></em></strong><em>.</em> </p>
<p>&nbsp;</p>
<br />
</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16084903&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fthe-future-of-gmos-in-the-uk-post-brexithttp://www.ipmvs.com/filewrapper/the-future-of-gmos-in-the-uk-post-brexitThu, 15 Feb 2018 06:00:00 GMTTime to Consider Patent Protection in China<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p>In the past decade, the Chinese government has made substantial policy changes regarding protection for intellectual property, both for obtaining rights and enforcing rights. These policies are generally favorable to patent owners and are intended to incentivize innovation.</p>
<p>In December, the World Intellectual Property Organization (WIPO) published statistics for worldwide patent application filings for 2016, the most recent available data. In 2016, 3.1 million patent applications were filed worldwide, with 1.3 million applications (42%) filed in China. In comparison, 600,000&#43; applications were filed in the US Patent Office, 300,000&#43; applications were filed in Japan, 200,000&#43; applications were filed in Korea, and 150,000&#43; applications were filed in Europe. These 5 patent offices represent 84% of all applications filed around the globe.</p>
<p>China has also established special courts for considering intellectual property disputes. Foreign patent owners have won 84% of infringement cases filed in the Chinese courts, and nearly all were granted injunctions against the infringers, though damage awards are typically very low.</p>
<p>So even if you are not yet selling in China, competitors will likely emerge due to the large market potential. Therefore, it may to time to consider filing for patent protection in China.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16067572&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252ftime-to-consider-patent-protection-in-china-1http://www.ipmvs.com/filewrapper/time-to-consider-patent-protection-in-china-1Tue, 13 Feb 2018 06:00:00 GMTSpace Systems Loral to Proceed with Trade Secret Theft Lawsuit Against Orbital ATK<h3 class="hidden">Post By Gregory "Lars" Gunnerson</h3>
<p>Daniel Wilson of Law360.com reports on Friday, February 2nd, U.S. District Judge Raymound A. Jackson “trimmed two claims from space technology company
SSL’s suit accusing rival Orbital ATK of stealing its trade secrets through a shared NASA server, but refused to toss the suit, saying SSL had adequately
pled the majority of its allegations.”</p>
<p>SSL was able to survive getting the entire suit thrown because it “had described the nature of the allegedly stolen documents and how they relate to the
development of it robotic satellite technology, as well as their competitive value to the company, and had showed that it made reasonable efforts to
keep them secret, including through proprietary markings on those documents, and had outlined the purported misappropriation of those documents by
an Orbital employee.”</p>
<p>The judge also found SSL pled sufficient factual allegations to support its allegation that Orbital ATK violated CAFA,&nbsp;also known as&nbsp;the Computer
Fraud and Abuse Act, a statute enacted to prevent unauthorized access to a federal computer system. Orbital ATK asserts the disputed information was
not accessed without authorization and that the access had not resulted in any damages.</p>
<p>Wilson reports the lawsuit arose after NASA informed SSL that there was a possibility some employees had used their access to NASA’s NX server, used by
both companies, to access proprietary SSL data relating to potentially revolutionary antenna technology. The NX server shares information between NASA
and the two companies and is part of NASA’s “Tipping Point” program. The “Tipping Point” program aims to use public-private partnerships to advance
technological progress in the commercial space industry.</p>
<p><em>Gregory "Lars" Gunnerson is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit </em> <a href="http://www.ipmvs.com/"><strong><em>www.ipmvs.com</em></strong> </a><em> or contact Lars directly via email at </em><a href="mailto:gregory.gunnerson@ipmvs.com"><strong><em>gregory.gunnerson@ipmvs.com</em></strong></a><em>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16062765&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fspace-systems-loral-to-proceed-with-trade-secret-theft-lawsuit-against-orbital-atkhttp://www.ipmvs.com/filewrapper/space-systems-loral-to-proceed-with-trade-secret-theft-lawsuit-against-orbital-atkSun, 11 Feb 2018 06:00:00 GMTAIAA Honors Inventor Dr. Jay Gundlach<h3 class="hidden">Post By Gregory "Lars" Gunnerson</h3>
<p>On January 16, 2018, Lawrence Garrett reported The American Institute of<strong>&nbsp;</strong>Aeronautics and Astronautics (AIAA) chose to honor Senior
Member Dr. Jay Gundlach in the <a href="http://www.aiaa.org/Member-Spotlight-January-2018/">AIAA Momentum Member Spotlight for January 2018</a>. With
respect to Dr. Gundlach’s intellectual property endeavors, Lawrence notes:
<br />
</p>
<p style="padding-left: 30px;">For the past two decades, Dr. Jay Gundlach has been a pioneering force behind many advancements in Unmanned Aerial Systems (UAS) and Unmanned Aerial Vehicle
(UAV) technologies, which have been growing areas of focus for the Institute over the past several years. Author of three books on UAS design, technologies,
and missions; and lead inventor on numerous UAS-related technology patents, Gundlach believes that UAS will soon dominate the aerospace industry, making
him an ideal member to spotlight for January 2018. . . .</p>
<p style="padding-left: 30px;">Over the course of his career, Gundlach has been credited with inventing a number of enabling technologies that have led to five U.S. patents. Of those
five, he cited the “SideArm combined launch and recovery system” patent as the most memorable. SideArm is a “combined launch and recovery system that
enables large fixed-wing UAS to operate from small Navy ships or austere land sites.” He called it “the core technology” that led to Aurora’s entry
into DARPA’s Tactically Exploited Reconnaissance Node (TERN) program.</p>
<p>Some of Dr. Gundlach’s patents may be viewed at the following links: <a href="https://patents.google.com/patent/US8622334B2/">U.S. Patent No. 8,622,334</a>;
<a href="https://patents.google.com/patent/US9010683B2/">U.S. Patent No. 9,010,683</a>; <a href="https://patents.google.com/patent/USD651156S1/">U.S. Design Patent No. 651,156</a>;
and <a href="https://patents.google.com/patent/USD712310S1/">U.S. Design Patent No. 712,310</a>.</p>
<p>Congratulations to Inventor Dr. Jay Gundlach for this fantastic achievement!</p>
<p><em>Gregory "Lars" Gunnerson is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit</em> <a href="http://www.ipmvs.com/"><strong><em>www.ipmvs.com</em></strong> </a><em> or contact Lars directly via email at</em><a href="mailto:gregory.gunnerson@ipmvs.com"><strong><em> gregory.gunnerson@ipmvs.com</em></strong></a><em>.</em>
</p>
<br />
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16046691&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252faiaa-honors-inventor-dr-jay-gundlachhttp://www.ipmvs.com/filewrapper/aiaa-honors-inventor-dr-jay-gundlachSat, 03 Feb 2018 06:00:00 GMTProtecting Your Company's Innovations<h3 class="hidden">Post By Kirk M. Hartung</h3>
<p>In 2017, over 600,000 patent applications were filed with the U.S. Patent Office, the most in its history. Clearly, a business plan for intellectual property
may provide substantial value to your company, or you may be leaving substantial value on the table. Failure to plan is, in essence, a plan to fail.
A thorough plan, properly executed, can provide protection for innovations, payback for research and development costs, competitive advantage, and
a revenue stream.&nbsp;</p>
<p>Whether innovation derives from sweat of the brow or a flash of genus, a strategic plan can maximize the value of newly developed or discovered inventions.
Without a plan, opportunities may be lost, and competitors may encroach without recourse.&nbsp;</p>
<p>Therefore, the following is a brief summary of steps and factors to consider for protecting your intellectual property.&nbsp;</p>
<ol>
<li>Every employee and officer of a company should sign an employment agreement that assures that any inventions relating to the company business will
be owned by the company. There also should be a policy regarding submission of ideas and developments, and a procedure to evaluate the submissions
in a timely manner. An invention submission form can be useful in capturing key information, such as a brief description of the invention, the
problems in the prior art, the structural and functional features, the benefits, etc. The American Invents Act, which began in March of 2013, created
a race to the Patent Office because it states that the first application on an invention will have priority over later applications. Therefore,
delay in filing an application may result in loss of patent rights. Time is of the essence!</li>
</ol>
<ol start="2">
<li>Although not required, a patent search is often useful in determining the potential likelihood of obtaining a patent. A patent search will also help
in writing the patent application by focusing on differences between the invention and the prior art. The search should cover issued patents and
published patent applications. Other technical literature and information on commercially available products can also be helpful in evaluating
patentability of an invention.</li>
</ol>
<ol start="3">
<li>It is also important to consider, early on, whether foreign patent protection will be sought. Most foreign countries preclude a patent if there is
any commercialization of the invention before the first patent application is filed. A U.S. patent will cover making, using and selling the invention
in the United States. Thus, imports and exports will be covered. However, if another party makes and sells the invention outside the U.S., you
don’t have protection unless you get foreign patents.</li>
</ol>
<ol start="4">
<li>In the United States, there is several filing options. An initial provisional application may be filed, to establish your place in line at the Patent
Office, and to “buy” another 12 months of time before filing a utility patent application. Both a provisional and a utility application need to
be as complete as possible. Filing of the utility application starts the examination process. Expedited examination may be obtained by paying an
additional government fee at the time the utility application is filed. A design application may be appropriate to protect the appearance of a
product, if the appearance is ornamental, rather than functional. Sometimes, both a utility application and a design application maybe be obtained
on a new and non-obvious product. Foreign patent applications should be filed within one year of the provisional or utility application filing
date, or within six months after a design application. Before any patent application is prepared, it is important to give your patent attorney
all the details of the invention.</li>
</ol>
<ol start="5">
<li>Once a patent issues, the patent number should be used on the product, on marketing materials, or alternatively, on a company website dedicated to
your patent portfolio.</li>
</ol>
<ol start="6">
<li>After the patent issues, you should regularly police the conduct of your competitors to be sure no one is infringing on your patent rights. If so,
a plan of action to deal with the potential infringer should be determined and pursued as quickly as possible.</li>
</ol>
<p>Patents are complex, timing is critical, and delay or incomplete information may be detrimental. Therefore, develop a business plan, implement the plan,
and be sure that everyone understands the plan.</p>
<p><i>For more information on this topic, contact <a href="https://www.ipmvs.com/attorneys/kirk-m-hartung" title="Kirk M. Hartung">Kirk M. Hartung</a> by calling our office at (515-288-3667).</i>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16044601&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fprotecting-your-companys-innovationshttp://www.ipmvs.com/filewrapper/protecting-your-companys-innovationsFri, 02 Feb 2018 06:00:00 GMTPTAB Opinion Provides Reminder that Indefiniteness Rejections Must Establish a Prima Facie Case<h3 class="hidden">Post By Jonathan L. Kennedy</h3>
<p>In a recent USPTO Patent Trial and Appeal Board (PTAB) opinion, the PTAB reversed an Examiner's indefiniteness rejection as the it failed to establish
a prima facie case of indefiniteness. In<em>Ex Parte</em><em> Kimura</em>, Appeal No. 17-1293 (PTAB Jan. 25, 2018), the claims were rejected for reciting,
"normal pumping operation." The rejection stated the term was indefinite because "[t]he claims fail to define what a normal pumping operation is."
This rejection was reversed. The PTAB noted an express definition is not required. Rather, an indefiniteness rejection must explain<em> "<strong>why</strong></em> the metes and bounds of [the] pending claim are not clear" so that the Applicant has enough information for a meaningful response. Further, the standard
requires that the term be assessed in light of what those skilled in the art would understand the term to mean in view of the specification.</p>
<p>Here the PTAB stated, "The Examiner has failed to articulate sufficient <em>why </em>the phrase 'a normal pumping operation' in the context of the claims,
or the Specification, would be unclear to the skilled artisan, nor are any ambiguities readily apparent." The PTAB also noted that prior art references
can also be considered to demonstrate the meaning of a term in the art. With these considerations the PTAB reversed the indefiniteness rejection.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16033887&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fptab-opinion-provides-reminder-that-indefiniteness-rejections-must-establish-a-prima-facie-casehttp://www.ipmvs.com/filewrapper/ptab-opinion-provides-reminder-that-indefiniteness-rejections-must-establish-a-prima-facie-caseFri, 26 Jan 2018 06:00:00 GMTThe Broad Institute has a Patent Revoked by the EPO on Technical Grounds<h3 class="hidden">Post By Blog Staff</h3>
<p>The CRISPR/Cas9 landscape continues to evolve around the world. On January 17, 2018, the EPO’s Opposition Division revoked Broad’s patent EP2771468 on
the grounds it lacked novelty. The revocation will not be take effect until after any appeal is heard. EP2771468 claimed priority to a US provisional
application, which would have allowed the patent to predate several references cited against its validity. In Europe, when filing a later patent application,
the list of inventors must either be the same or if fewer, the dropped inventors must have transferred the right to claim priority to the other applicant(s).
This transfer must also occur prior to the filing of the later application. Neither Broad nor Rockefeller transferred any rights as the dispute was
not settled until January 15, 2018, after the later applications were filed. This lack of transferred rights led the EPO to determine that Broad could
not claim priority to the provisional application to predate the prior art which, ultimately rendering the patent anticipated. Broad, with the support
of many experts, has announced it will appeal this decision to the EPO’s Technical Board of Appeals. Broad, along with the experts, wants the EPO to
use this case to harmonize the EPO procedures with international treaties and make their procedures compatible with the Paris Convention. Specifically,
they want the EPO to recognize the same priority dates as the home country, in this case the USPTO, recognizes to which a later application claims
priority. Many of Broad’s other patents in Opposition proceedings also face the same result if the decision is not overturned during appeal. This case
highlights the importance of conducting early inventorship analysis in collaborative research.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16030681&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fthe-broad-institute-has-a-patent-revoked-by-the-epo-on-technical-groundshttp://www.ipmvs.com/filewrapper/the-broad-institute-has-a-patent-revoked-by-the-epo-on-technical-groundsWed, 24 Jan 2018 06:00:00 GMTGlobal Intellectual Property Indicator in 2017 Published by WIPO<h3 class="hidden">Post By Xiaohong Liu</h3>
<p>World Intellectual Property Organization (WIPO) published its annual report, Global Intellectual Property Indicator 2017, on January 8, 2018. The report
is 226 pages long and contains mostly statistics and colorful graphs. Although it is not a "must read" for everyone, it is definitely an informative
resource for anyone who is in the business of creating or protecting intellectual property.</p>
<p>The following are a few statistics I found interesting and will hopefully entice you to read the report. <u><strong><a href="http://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2017.pdf" target="_blank" title="World Intellectual Property Indicators 2017">The report can be found here.</a></strong></u>
<br />
</p>
<ol>
<li>Global intellectual property (IP) filings have reached a new high. Global patent filings grew by 8.3% to a total of 3,127,900, trademark filing activity
by 13.5% to 9,768,200, industrial design filing by 8.3 to 1,240,600, unity models filing by 28.9% to 1,553,300, and plant varieties by 8.3 to 16,510.
This growth marks the seventh year of straight increases.</li>
<li>China increased its patent filing by 21.5%, as did filing activity for trademarks (+30.8%) and industrial designs (+14.3%). The United States of America
also saw increases in filing activity for patents, trademarks and industrial designs, which grew by 2.7%, 5.5% and 12.1%, respectively.</li>
<li>The State Intellectual Property Office of the People’s Republic of China (SIPO) received 1.3 million patent applications in 2016 – more than the combined
total for the United States Patent and Trademark Office (USPTO; 605,571), the Japan Patent Office (JPO; 318,381), the Korean Intellectual Property
Office (KIPO; 208,830) and the European Patent Office (EPO; 159,358). Together, these top five offices accounted for 84% of the world total in
2016.</li>
<li>The top ten patent offices in term of patent filing number are China, US, Japan, Korea, EPO, Germany, India, Russian Federation, Canada, and Australia.
Brazil drops out of top 10 this year as a result of a 7.3% annual decline in filings in 2016. The Russian Federation (-8.6%), Brazil (-7.3%), Indonesia
(-6.7%), and Canada (-6%) also reported the most substantial declines.</li>
<li>Around 96% of all applications from China are filed in China and only 4% filed abroad. In contrast, filings abroad constitute around 43% of total applications
from Japan and the U.S. Among the top 20 origins, applications filed abroad made up a large share of the totals for Canada, Israel and Switzerland.
However, in absolute numbers, the U.S. had the most with 215,918, followed by Japan (191,819) and Germany (75,378). Germany saw growth in applications
abroad, whereas these decreased for both Japan and the U.S.</li>
<li>Applicants residing in China, while ranking first in terms of resident applications, filed considerably fewer applications abroad (51,522). However,
applications filed abroad from China have increased markedly in recent years – from around 7,000 in 2006 to the 51,522 filed in 2016.</li>
<li>Other trademark filing hot spots are in Japan (+30.8%), the Russian Federation (+14.8%) and India (+8.3%), and the hot spots in industrial design filing
activity are in the Russian Federation (+9.4%) and at the European Union Intellectual Property Office (EUIPO; +6.5%).</li>
<li>Average pendency time for first office action was shortest at the offices of New Zealand (1.3 months), Mexico (3) and the Islamic Republic of Iran
(4). In contrast, Brazil (84 months) and India (72 months) had the longest pendency times for first action.</li>
<li>The top 5 technical fields measured by published patent applications are Computer Technology, Electrical Machinery, Apparatus, Energy; Measurement,
Digital Communication, and Medical Devices. These fields counted 28.6% of the published patent applications.</li>
<li>The fields of Biochemistry, Pharmaceuticals, Organic Fine Chemistry, Food Chemistry, Analysis of Biological Material, Basic Material Chemistry, and
Macromolecular Chemistry Polymer have the highest percentage of women inventors, from about 58% to about 44%.</li>
</ol>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=16009319&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fglobal-intellectual-property-indicator-in-2017-published-by-wipohttp://www.ipmvs.com/filewrapper/global-intellectual-property-indicator-in-2017-published-by-wipoFri, 19 Jan 2018 06:00:00 GMTSail On: Former Commodores Guitarist Fails to Establish Rights in Band's Trademark<h3 class="hidden">Post By Nicholas Krob</h3>
<p>Who owns a band’s trademark when that band is composed of multiple people? And more importantly, what rights does a band member have in that trademark
when they leave the band? Earlier this week, the Eleventh Circuit addressed these very questions in a case involving legendary funk/soul band the Commodores.</p>
<p>The Commodores, famous for chart-topping singles like “Brick House” and “Three Times a Lady,” formed in 1968. Despite the group’s success, one of the original
members, Thomas McClary, decided to leave the band in 1984 to pursue a solo career.</p>
<p>Problems started to arise, however, in 2009 when McClary performed with two other former members of the Commodores and advertised the show as “a Commodores
reunion.” Despite being told by the band he had no right to use the Commodores name, McClary thereafter formed a group named “Commodores Featuring
Thomas McClary” in 2013, which would also perform under the name “The 2014 Commodores.”&nbsp;</p>
<p>The band filed a lawsuit against McClary in 2014 claiming, among other things, trademark infringement. The United States District Court for the Middle
District of Florida granted a preliminary, and later permanent, injunction against McClary enjoining him from using “the Commodores” trademark and
granted the band's motion for judgment as a matter of law on the basis that McClary had left the band in 1984 and had left behind all rights to the
band’s trademark when he did so. The court ruled that rights in “the Commodores” trademark remained “with the group.”</p>
<p>On appeal, the Eleventh Circuit affirmed the district court’s ruling. The court noted that, as trademarks are designed to identify and distinguish one’s
goods or services from those of another and to indicate the source of the goods or services, “the Commodores” identifies and distinguishes the music
of only the band known as “the Commodores”&mdash;not an unrelated band formed by a former member. The court explained that rights in this name remained
with the group members who “continued to use and exert control over the group.” As McClary had left the band and did not exercise any control over
the quality or reputation of the band performing as “the Commodores,” the court determined he did not have any rights in the name.</p>
<p>In response to an argument by McClary that the permanent injunction was “overbroad” by preventing him from identifying himself and his music “in a historically
accurate way,” the court added a key distinction. Notably, the court explained that McClary is not precluded from identifying himself as a founder
of the Commodores or in any other historically accurate way, providing the example of “Thomas McClary, founder of The Commodores.” While this use includes
the band’s trademark, it does so in a way that constitutes fair use. As the court made clear, ownership in a band’s trademark will generally remain
with the band when a member leaves, but that member is free to use a mark that is either unlikely to cause consumer confusion or constitutes fair use.
“Thomas McClary, founder of The Commodores” and variations thereof meet this standard&mdash;“Commodores Featuring Thomas McClary” does not.</p>
<p>The case is <em>Commodores Entm’t Corp. v. McClary</em>, Case No. 16-15794 in the United States Court of Appeals for the Eleventh Circuit and can be read
<a href="http://media.ca11.uscourts.gov/opinions/pub/files/201615794.pdf"> here</a>.</p>
<p>&nbsp;</p>
<p><em><strong><a href="https://www.ipmvs.com/attorneys/nicholas-j-krob" title="Nicholas J. Krob">Nicholas Krob</a></strong> is an Intellectual Property Attorney at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <a href="http://www.ipmvs.com/"><strong>www.ipmvs.co</strong><strong>m</strong></a> or contact Nick directly via email at </em><strong><em><a href="mailto:nicholas.krob@ipmvs.com" title="email Nick Krob"><em>nicholas.krob@ipmvs.com</em></a></em></strong><em>.</em> </p>
<p>&nbsp;</p>
<br />
<p>&nbsp;</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=15992233&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fsail-on-former-commodores-guitarist-fails-to-establish-rights-in-bands-trademarkhttp://www.ipmvs.com/filewrapper/sail-on-former-commodores-guitarist-fails-to-establish-rights-in-bands-trademarkThu, 11 Jan 2018 06:00:00 GMTMusic Publishing Company Sues Spotify for $1.6 Billion<h3 class="hidden">Post By Brandon Clark</h3>
<p>Spotify has a growing copyright problem and as previously discussed on this blog (<a href="filewrapper/does-spotify-owe-you-money-streaming-service-sued-for-150-million-in-unpaid-royalties?filewrapper=true" target="_blank">here</a> and<a href="filewrapper/spotify-settles-class-action-lawsuit-for-43-4-million?filewrapper=true" target="_blank"> here</a>)
they are no stranger to copyright infringement lawsuits. Wixen Music Publishing Inc. recently filed a complaint seeking $1.6 billion in damages alleging
copyright infringement. On December 29th, Wixen filed suit in California federal court claiming Spotify has repeatedly failed to obtain necessary statutory,
or mechanical, licenses to reproduce and distribute songs on its service, and as a result has cheated artists out of millions in royalties.</p>
<p>According to the complaint, Wixen administers more than 50,000 songs written or owned by more than 2,000 artists, including Tom Petty, Stevie Nicks, Weezer,
Rage Against the Machine, The Black Keys, Styx, The Doors, Santana and The Beach Boys.</p>
<p>The suit seeks the maximum amount of statutory damages for willful copyright infringement, or $150,000 per composition, of approximately 10,784 musical
compositions, for at least $1.6 billion, plus attorneys’ fees and costs. The suit notes that Spotify has about 140 million active users and 60 million
subscribers, and it’s obtained more than $1 billion in private equity.</p>
<p>The lawsuit comes after Spotify reached a proposed $43 million settlement to resolve a class action lawsuit from songwriters in May of 2017. That settlement
must still be approved by a judge, but many songwriters and music publishing companies have voiced their disapproval of that outcome. The suit says
that Wixen plans to opt-out of the proposed settlement.&nbsp;
<br />
<br /> The case is Wixen Music Publishing Inc. v. Spotify USA Inc., case number 2:17-cv-09288, in the U.S. District Court for the Central District of California
and can be read <a href="https://www.scribd.com/document/368270996/Wixen" target="_blank">here</a>.</p>
<p><em><b><a href="https://www.ipmvs.com/attorneys/brandon-w-clark" title="Brandon W. Clark">Brandon W. Clark</a></b> is the Chair of the Copyright, Entertainment &amp; Media Law Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit </em>
<a href="http://www.ipmvs.com"><em>www.ipmvs.com</em>
</a><em> or contact Brandon directly via email at </em><a href="mailto:brandon.clark@ipmvs.com"><em>brandon.clark@ipmvs.com</em></a><em>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=15977572&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fmusic-publishing-company-sues-spotify-for-1-6-billionhttp://www.ipmvs.com/filewrapper/music-publishing-company-sues-spotify-for-1-6-billionWed, 03 Jan 2018 06:00:00 GMTDetermining a &quot;Joint Enterprise&quot; in the Wake of Akamai's Divided Infringement Standards<h3 class="hidden">Post By Sarah Dickhut</h3>
<p>On December 19, 2017, the Federal Circuit released an opinion in <em><a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2386.Opinion.12-18-2017.1.PDF" title="Travel Sentry, Inc. v. Tropp">Travel Sentry, Inc. v. Tropp</a>,</em> clarifying further the requirements for satisfying divided infringement, i.e. infringement involving multiple actors carrying out the claimed steps
of a method patent where no single accused infringer has performed all the steps. The opinion stems from a series of cases between Travel Sentry and
David Tropp. Tropp owns patents directed to methods of improving airline luggage inspection through the use of dual-access locks. The luggage has a
dual lock system where one lock combination is available to the consumer, and the other is a master key lock portion available to the TSA. In practice,
the TSA can search the bag and re-lock the baggage, providing the consumer with secure baggage before and after TSA inspection.</p>
<p>Tropp’s method patents require the steps of (1) making the dual lock available to the consumer and (2) providing the master key lock portion to the TSA.
Travel Sentry clearly provides the first step, but the TSA provides the second step, rather than Travel Sentry itself. Thus, the key issue is whether
the TSA’s activity of supplying and utilizing the master key was sufficiently controlled and/or properly a “joint enterprise” as required by <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/9-1372.Opinion.8-11-2015.1.PDF"><em>Akamai v. Limelight</em>.</a>
</p>
<p>The district court determined that Travel Sentry “facilitated” the TSA’s activity, but that this facilitation did not rise to the level of control, or
of a joint enterprise under <em>Akamai</em>. Travel Sentry’s actions fell short because there was not enough evidence to show Travel Sentry was able
to influence the TSA’s actions to the point where Travel Sentry “masterminded” the enactment of the patented process.</p>
<p>Upon review, the Federal Circuit vacated the district court’s judgment on the grounds that the district court interpreted <em>Akamai’s</em> understanding
of “joint enterprise” too narrowly. In addition, the district failed to consider “the context of the particular facts presented” in the case, such
as the level of cooperation expected between a government agency and an infringer. The Federal Circuit noted that evidence of cooperation that was
presented may be sufficient for a jury to attribute the TSA’s activities to Travel Sentry.</p>
<p>Regardless of the outcome upon remand to the district court, the Federal Circuit’s opinion in this case opens up a broader understanding of a “joint enterprise”
within the context of divided infringement.</p>
<p>
<p><em>Sarah Dickhut is an Associate Attorney in the Chemical/Biotech Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <a href="http://www.ipmvs.com/"><strong>www.ipmvs.co</strong><strong>m</strong></a> or contact Sarah directly via email at </em><strong><em><a href="mailto:sarah.dickhut@ipmvs.com"><em>sarah.dickhut@ipmvs.com</em></a></em></strong><em>.</em> </p>
<p>&nbsp;</p>
<br />
</p>
<br />http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=15951344&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fdetermining-a-quot-joint-enterprise-quot-in-the-wake-of-akamais-divided-infringement-standardshttp://www.ipmvs.com/filewrapper/determining-a-quot-joint-enterprise-quot-in-the-wake-of-akamais-divided-infringement-standardsThu, 21 Dec 2017 06:00:00 GMTPatent Application Filed for 'Take Me Home' Spacesuit<h3 class="hidden">Post By Gregory "Lars" Gunnerson</h3>
<p>Two weeks ago, Space.com’s Space Insider Columnist Leonard David reported that the Charles Stark Draper Laboratory in Cambridge, Massachusetts has filed
a patent application (Serial No. 15/164,264) for a self-return system to ensure spacewalking astronauts are safe. Draper’s research into spacesuits
is funded by NASA.</p>
<p>David&nbsp;explains that&nbsp;the self-return system determines a precise location of the astronaut in harsh space environments where GPS is unavailable.
The system then computes an optimal return trajectory that accounts for time, oxygen consumption, safety and clearance requirements, and guides a disoriented
and possibly unconscious astronaut to safety effectively. The system may also be configured to monitor the movement, acceleration and position of the
astronaut relative to a fixed object, such as an accompanying orbiting spacecraft.</p>
<p>Draper Director of Space Systems Séamus Tuohy asserts the return-home technology is an advance in spacesuits that is long overdue because current spacesuits
feature no automatic navigation solution.</p>
<p>The system’s navigation module can still be configured using GPS, vision-aided navigation or a star-tracker system, David writes. “Additionally, to improve
the astronaut’s positioning and orientation, Draper has developed software that fuses data from vision-based and inertial navigation systems and that
benefits from the advantages of both sensing approaches.”</p>
<p>The inventors believe the system has many applications that can be used on Earth, some of which include improving the safety of first responders and firefighters
as they navigate smoke filled rooms and assisting skydivers and scuba divers in the event they become disoriented.</p>
<p><em><strong><a href="/attorneys/gregory-lars-gunnerson" title="Lars Gunnerson">Gregory "Lars" Gunnerson</a></strong> is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <a href="http://www.ipmvs.com/"><strong>www.ipmvs.com</strong></a> or contact Lars directly via email at<strong><a href="mailto:gregory.gunnerson@ipmvs.com"> gregory.gunnerson@ipmvs.com</a></strong>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=15950103&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fpatent-application-filed-for-take-me-home-spacesuithttp://www.ipmvs.com/filewrapper/patent-application-filed-for-take-me-home-spacesuitWed, 20 Dec 2017 06:00:00 GMTSurvey Shows Academic Intellectual Property is Growing<p>Academic research effort continues to grow according to results from the annual survey of the Association of University Technology Managers (AUTM). The
recently released survey of 195 universities, hospitals and other research institutions reflects increases in many areas of inventive efforts. The
number of invention disclosures in 2016 increased 8.7% since 2012, and provisional patent application filings were up by 5.2% from 2015. The number
of new patent applications gained 3.4% over 2015, and issued patents were up 5.1%. A new record was set for startups, and the survey reports 73% of
the new business remained in the developer’s state. International filings continue to grow, showing a 33.6% increase in new patent applications filed
outside the U.S. This is twice the number of international filings since 2012.
<br />
</p>
<p>Economic contributions of academic inventions have grown substantially. According to AUTM, the U.S. economy benefited from academic patents and licensing
to industry by a gross output of $1.3 trillion during a 20-year period. Interestingly, the report reflects that licenses to startups or small companies
were 70% of licenses filed, while licenses to large entities dropped by 15% from the prior year. Of those startups, 73.4% were in the academic institution’s
home state.
<br />
</p>
<p>According to the executive summary comments accompanying the results, the survey reflects U.S. research institutions continue to invest in intellectual
property and “reflects a more international approach to intellectual property.” They note that this increase is even though total research expenditures
increased only 0.45%, attributing the increases in filing and outreach to the efforts of technology transfer offices of the academics.
<br />
</p>
<p>At the same time, the summary cautions they observed a slight decrease in exclusive versus nonexclusive license agreement and in options. They comment
this is possibly due to decreased “risk appetite” of licensees in the face of uncertainty of the direction of U.S. patent rights. No doubt the licensees
will be closely watching the outcome of the Supreme Court’s decision regarding post grant challenges to patents. </p>
<p>&nbsp;</p>
<p><em><strong><a href="/attorneys/patricia-a-sweeney" title="Patricia A. Sweeney">Patricia Sweeney</a></strong> is an Intellectual Property Attorney in the Biotechnology/Chemical Patent Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information please visit <strong><a href="www.ipmvs.com" title="IPMVS">www.ipmvs.co</a></strong><strong><a href="www.ipmvs.com" title="IPMVS">m</a></strong> or contact Pat directly via email at <strong><a href="mailto:patricia.sweeney@ipmvs.com" title="Email Pat Sweeney">patricia.sweeney</a></strong></em><strong><em><em><a href="mailto:patricia.sweeney@ipmvs.com" title="Email Pat Sweeney">@ipmvs.co</a>m</em></em></strong><em>.&nbsp;</em> </p>
<p>&nbsp;</p>
<h3 class="hidden">Post By Patricia Sween</h3>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=15947268&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fsurvey-shows-academic-intellectual-property-is-growinghttp://www.ipmvs.com/filewrapper/survey-shows-academic-intellectual-property-is-growingTue, 19 Dec 2017 06:00:00 GMTScandalous and Immoral Trademark Ban Ruled Unconstitutional<h3 class="hidden">Post By Brandon Clark</h3>
<p>Earlier today, the Federal Circuit ruled that the U.S. Supreme Court’s recent decisions striking down the Lanham Act’s ban on “disparaging” trademark registrations
also means that barring “scandalous” or “immoral” trademarks is unconstitutional.</p>
<p>The ruling came in a case filed by Erik Brunetti, who appealed to the Federal Circuit in late 2014 after the Trademark Trial and Appeal Board refused his
attempt to register “Fuct”, for clothing and apparel. The case was put on hold pending the Supreme Court’s decision in <em>Matal v. Tam</em>, a case
involving the mark “The Slants”, which was originally deemed disparaging to Asian-Americans.</p>
<p>Section 2(a) of the Lanham Act bars the registration of a trademark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter
which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt,
or disrepute.”</p>
<p>Following the ruling in <em>Tam</em>, many experts believed that the ban on “scandalous and immoral” trademarks could not survive the Supreme Court’s new
precedent, but the USPTO nonetheless defended the provision.</p>
<p>U.S. Circuit Judge Kimberly A. Moore issued a 42-page opinion for the three-judge panel, writing, “There are words and images that we do not wish to be
confronted with, not as art, nor in the marketplace, the First Amendment, however, protects private expression, even private expression which is offensive
to a substantial composite of the general public. The government has offered no substantial government interest for policing offensive speech in the
context of a registration program such as the one at issue in this case.”</p>
<p>Judge Moore went further saying that, “A trademark is not foisted upon listeners by virtue of its being registered, nor does registration make a scandalous
mark more accessible to children. Absent any concerns that trademark registration invades a substantial privacy interest in an intolerable manner,
the government’s interest amounts to protecting everyone, including adults, from scandalous content. But even when ‘many adults themselves would find
the material highly offensive,’ adults have a First Amendment right to view and hear speech that is profane and scandalous.”</p>
<p>The case is in re: Brunetti, case number 15-1109, in the U.S. Court of Appeals for the Federal Circuit.</p>
<p><em><b><a href="/attorneys/brandon-w-clark" title="Brandon W. Clark">Brandon W. Clark</a></b> is the Chair of the Copyright, Entertainment &amp; Media Law Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit </em>
<a href="http://www.ipmvs.com"><em>www.ipmvs.com</em>
</a><em> or contact Brandon directly via email at </em><a href="mailto:brandon.clark@ipmvs.com"><em>brandon.clark@ipmvs.com</em></a><em>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=15940299&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fscandalous-and-immoral-trademark-ban-ruled-unconstitutionalhttp://www.ipmvs.com/filewrapper/scandalous-and-immoral-trademark-ban-ruled-unconstitutionalFri, 15 Dec 2017 06:00:00 GMTCopyright Small Claims Bill Introduced<h3 class="hidden">Post By Brandon Clark</h3>
<p>Copyright owners are one step closer to being able to pursue copyright infringement actions through a copyright small claims system. A new bipartisan House
bill has introduced the Copyright Alternative in Small-Claims Enforcement Act of 2017 (“CASE Act”). The CASE Act, H.R. 3945, was recently introduced
by Congressional representatives to create a small claims court within the US Copyright Office, allowing copyright holders to present a claim before
claim officers. It is sponsored by Rep. Hakeem Jeffries (D-NY) and Rep. Tom Marino (R-PA), and co-sponsored by representatives Doug Collins (R-GA),
Lamar Smith (R-TX), Judy Chu (D-CA), and Ted Lieu (D-CA).</p>
<p>The proposed legislation would amend the Copyright Act to establish the Copyright Claims Board (“CCB”), which would hear and decide smaller-scale copyright
disputes. Copyright enforcement is often a very difficult and costly undertaking for copyright owners and this is intended to make that process easier.
The damages awarded through this system would be limited to $15,000 per work, or $30,000 total.</p>
<p>If a copyright owner was seeking damages of more than $30,000, they’d need to file a copyright infringement claim through the existing federal court process.
Proponents of the bill claim it would allow independent copyright owners to pursue remedies while avoiding the cost, complexity, and burden imposed
by federal court litigation while opponents of the bill see it as a potential flood-gate to an increase of fraudulent copyright claims and the abuse
of copyright laws.</p>
<p>While the CASE Act still has a number of obstacles to overcome this is an indicator that updates to the Copyright Act are on the horizon. You can read
the full text of the bill for yourself at the following link: <a href="https://www.congress.gov/115/bills/hr3945/BILLS-115hr3945ih.pdf">https://www.congress.gov/115/bills/hr3945/BILLS-115hr3945ih.pdf</a>
</p>
<p><em><b><a href="/attorneys/brandon-w-clark" title="Brandon W. Clark">Brandon W. Clark</a></b> is the Chair of the Copyright, Entertainment &amp; Media Law Practice Group at McKee, Voorhees &amp; Sease, PLC. For additional information, please visit </em>
<a href="http://www.ipmvs.com"><em>www.ipmvs.com</em>
</a><em> or contact Brandon directly via email at</em><a href="mailto:brandon.clark@ipmvs.com"><em> brandon.clark@ipmvs.com</em></a><em>.</em>
</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=15939057&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fcopyright-small-claims-bill-introducedhttp://www.ipmvs.com/filewrapper/copyright-small-claims-bill-introducedThu, 14 Dec 2017 06:00:00 GMTConstitutionality of Inter Partes Reviews: A Look at Supreme Court Oral Arguments in Oil States<p>The enactment of the AIA in 2011, <a href="https://www.filewrapper.com/filewrapper/leahy-smith-america-invents-act-reforms-patent-law?filewrapper=true">inter partes review</a> (IPR), has been available as a method to challenge the validity of a patent in the US Patent and Trademark Office. A total of <a href="https://www.uspto.gov/sites/default/files/documents/AIA%20Statistics_March2017.pdf">6139 IPR petitions</a> (92% of all petitions) have been filed with the Patent Trial and Appeals Board (PTAB) since that time. One of those challenges occurred when Green’s
Energy Group, in response to litigation, went to the PTAB to invalidate Oil States Energy Service’s patent, and succeeded. This action prompted Oil
States to file a lawsuit in federal&nbsp;court&nbsp;to challenge the constitutionality of the IPR process as the taking of a property right without
compensation and without the input of a jury. This case will soon be decided by the U.S. Supreme Court.</p>
<p>Oral arguments took place on November 28, 2017 and the Justices of the Court are clearly split on the constitutionality of IPRs.&nbsp;Oil State's&nbsp;argument
begins by highlighting that ex parte and inter partes reexamination in the Patent Office, “are fundamentally examinational and not adjudicational in
nature, [and] are perfectly consistent with Article III.” As such, because these proceedings take place between the government and the patent owner,
they are distinct from IPR which is between two individual parties, and not the government.&nbsp;Oil States&nbsp;highlights on rebuttal IPRs are in
essence a trial&mdash;“[i]t hears and determines a cause between two private parties that results in a final enforceable judgment . . . . Our challenge
is to an adjudication in the Article III sense between two private parties, where the government isn’t engaging in the classic executive action of
bringing the action or prosecuting action but . . . is the decider of the action.”</p>
<p>Green Energy&nbsp;dealt with questions which seemed to indicate the Court had issue with the vested rights theory of property law, as there is no element
of patent law which would allow, after a passage of time, the rights of the patent to no longer be challenged. Further, the Justices focused on the
issues of due process related to “panel stacking” to serve as, in the words of Chief Justice Roberts, “a tool of the executive activity . . .rather
than . . .anything resembling a determination of rights.”&nbsp;Green Energy's&nbsp;asserted that this a “quarrel &nbsp;. . .with the process” and when
looking under the factors in <a href="https://www.filewrapper.com/filewrapper/supreme-court-upholds-broadest-reasonable-interpretation-and-no-review-for-institution-in-ptab-proce?filewrapper=true">Cuozzo</a>,
the IPR is constitutional.</p>
<p>Counsel for the Government focused on the involvement of the PTAB in adjudicating infringement claims. However, Counsel appeared to have difficulty addressing
issues raised by Justices Sotomayor and Gorsuch directed toward the “traditional” involvement of the USPTO only in the granting and assessing compliance
with statutory grounds, not in the adjudication of validity and/or infringement. Justice Ginsberg seemed to take issue with the fact that the validity
challenge could be moved from a court to the PTAB and then court would “defer to the agency under a substantial evidence standard on questions of fact
and will review legal issues de novo. And that’s a less favorable standard of review for the patentee than would be applied in district court infringement
litigation . . . .”</p>
<p>The outcome of the case may once again increase litigation from non-practicing entities (less affectionately known as patent trolls); however, based on
the number of amicus briefs filed by pro-patent owner groups, there is certainly the sentiment that IPRs have made the path to asserting rights difficult.
A decision is expected in early 2018 and will be watched closely by the patent community.</p>
<p>A full oral argument <a href="https://www.supremecourt.gov/oral_arguments/argument_transcripts/2017/16-712_879d.pdf">transcript</a> and <a href="https://www.supremecourt.gov/oral_arguments/audio/2017/16-712">audio</a> are available for review. <em>Oil States Energy Services, LLC v. Greene’s Energy Group, LLC</em>, Dkt. No. 16-712, Argued Nov. 27, 2017.</p>http://www.ipmvs.com/RSSRetrieve.aspx?ID=18205&A=Link&ObjectID=15925605&ObjectType=35&O=http%253a%252f%252fwww.ipmvs.com%252ffilewrapper%252fconstitutionality-of-inter-partes-reviews-a-look-at-supreme-court-oral-arguments-in-oil-stateshttp://www.ipmvs.com/filewrapper/constitutionality-of-inter-partes-reviews-a-look-at-supreme-court-oral-arguments-in-oil-statesWed, 06 Dec 2017 06:00:00 GMT